Ex Parte Jannard

Patent Trial and Appeal Board

Oct 27, 2017

13935724 (P.T.A.B. Oct. 27, 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.
13/935,724 07/05/2013 James H. Jannard 3408.0440001 9457
150261 7590 10/31/2017
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
AMADIZ, RODNEY
ART UNIT PAPER NUMBER
2694
NOTIFICATION DATE DELIVERY MODE
10/31/2017 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):
e-office @ skgf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES H. JANNARD
Appeal 2017-006382
Application 13/935,724
Technology Center 2600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-006382
Application 13/935,724
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21—23, 41, and 47, which constitute all the claims
pending in this application.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Appellant’s claimed invention is directed to “data management
system” in communication with a “user interface” that “may comprise a
wearable support, such as an eyeglass frame, adapted to carry one or more of
speakers, microphone and video display” (Abstract).
Independent claim 21, reproduced below, is representative of the
subject matter on appeal:
21. A wearable electronically enabled interface system for
providing audio and/or video input to a wearer from at least two
sources, comprising:
an eyeglass frame having no lenses;
a microphone configured to receive voice commands from
the wearer;
an electronics module configured to simultaneously
receive communications from multiple electronic input sources,
wherein the communications include wireless communications
received and transmitted over multiple networks via multiple
transceivers;
a sensor configured to measure acceleration;
a speaker for providing audio output to the wearer;
1 Claims 24—26, 28—30, 32-40, 42-46, and 48—50 were canceled in an
Amendment submitted with the Reply. Reply Br. 1.
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Application 13/935,724
a screen configured to display video images to the wearer;
and
a selector configured to switch between a first audio or
video input to the wearer and a second audio or video input to
the wearer.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Spitzer ’546
Blum et al.
Spitzer et al.
Ibrahim et al.
Reshefsky
Nelis
Yeh
US 6,091,546
US 2003/0058406 Al
US 2004/0212776 Al
US 2004/0240404 Al
US 6,873,862 B2
US 2005/0248722 Al
US 2006/0109350 Al
July 18,2000
Mar. 27, 2003
Oct. 28, 2004
Dec. 2, 2004
Mar. 29, 2005
Nov. 10, 2005
May 25, 2006
THE REJECTIONS
The Examiner made the following rejections:
Claims 21 and 47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spitzer, in view of Nelis, Ibrahim, Yeh, and Blum. Final
Act. 2—3.
Claims 23 and 41 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spitzer, in view of Nelis, Ibrahim, Yeh, Blum, and Spitzer
’546. Final Act. 5.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spitzer, in view of Nelis, Ibrahim, Yeh, Blum, and
Reshefsky. Final Act. 6.
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Application 13/935,724
ISSUES
The issues are whether the Examiner erred in finding:
1. Spitzer and Ibrahim combinable as analogous art; and
2. motivation with a rational underpinning to combine Ibrahim with
Spitzer.
ANALYSIS
We adopt the Examiner’s findings in the Answer and Final Office
Action and we add the following primarily for emphasis. We note that if
Appellants failed to present arguments on a particular rejection, we will not
unilaterally review those uncontested aspects of the rejection. See Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas,
551 F.3d 1307, 1313—14 (Fed. Cir. 2008) (The Board may treat arguments
Appellant failed to make for a given ground of rejection as waived).
1. Analogous Art
Appellant argues the Examiner erred in combining the references
because “Ibrahim is not analogous art to the invention of Claim 21” (App.
Br. 12). Particularly, Appellant contends “Ibrahim is not in the same field of
endeavor as the invention of Claim 21 because Ibrahim is not directed to
wearable devices providing a user-oriented suite of functionality” (App. Br.
13) and “Ibrahim is not reasonably pertinent to the problem faced by the
inventor of Claim 21 because Ibrahim is not directed to the management and
selection of an input source from multiple active input sources for
consumption by a user” (App. Br. 16); Appellant further notes that under a
recent Federal Circuit case regarding whether a reference is reasonably
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Application 13/935,724
pertinent, “the question is whether an inventor would look to this particular
art to solve the particular problem at hand” (App. Br. 16, quoting Circuit
Check Inc. v. QXQ, Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (emphasis
added)).
We are not persuaded of Examiner error. Two separate tests define
the scope of analogous prior art: (1) whether the art is from the same field of
endeavor as the claims, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
A. Field of Endeavor
To determine the invention’s field of endeavor, we consider the
“explanations of the invention’s subject matter in the patent application,
including the embodiments, function, and structure of the claimed
invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations
omitted). Although Appellant argues the wearability of the claimed
invention provides both functional and structural differences from Ibrahim
(see App. Br. 13—15), we note that Claim 21 does not require the electronics
module that transmits and receives wireless communications itself to be
placed inside the eyeglass frame. The disclosure additionally indicates that
in one embodiment, “the wearable electronic interface 601 is any electronic
device that may be worn by a wearer” (Spec. 1207). As the claimed
invention is “configured to simultaneously receive communications” from
“wireless communications received and transmitted” (Claim 21), whose
functions are performed by electronic components, we find the field of
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endeavor to be wireless communications. Similarly, we find Ibrahim’s field
of endeavor to be wireless communications, as Ibrahim “relates generally to
wireless communication” (Ibrahim 12).
B. Reasonably Pertinent to the Particular Problem
The Examiner finds, and we agree, that Ibrahim is “pertinent to the
particular problem with which the application is concerned,” which is
a system having a device that simultaneously receives
communication from multiple electronic input sources (See
Claim 21, lines 5-6). Ibrahim is analogous in that it is directed
to solving the same exact problem of having a device (Fig. 2 at
18-32) simultaneously receive communication from multiple
electronic input sources
(Ans. 3, citing Ibrahim Fig. 2, #63 and #65, and 148). With respect to the
Examiner’s findings reproduced above, Ibrahim explicitly teaches that “the
wireless communication device of FIG. 2 may be implemented using one or
more integrated circuits” (Ibrahim 136) and the “external device[s]” may
use a Bluetooth or IEEE 802.11 interface and may be a “headset” (Ibrahim
127; see Final Act. 4). Thus one of ordinary skill in the art would look to
this particular art to solve Appellant’s particular problem(s), because this art
teaches “better management of input signals from multiple data sources”
(App. Br. 16, citing Spec. H 7—10) using miniature elements such as
integrated circuits, and further relates to wearable devices such as headsets.
Accordingly, Appellant’s arguments do not persuade us the Examiner
erred in finding Ibrahim as analogous art.
2. Motivation to Combine
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Appellant argues the Examiner erred, because “[a] person of ordinary
skill in the art would not have been motivated to combine the teachings of
Ibrahim, which are directed to the implementation of algorithms to a
network of computers, with those of Spitzer ’776, which are directed
primarily to mechanical structures” (App. Br. 17). Appellant contends that
because Spitzer is “not concerned or related to peer [to] peer wireless
interfaces,” that Spitzer “would provide no motivation for a person of
ordinary skill in the art to modify the device to incorporate multiple input
sources, let alone modify Spitzer ’776 based on the teachings of Ibrahim”
(App. Br. 18).
We are not persuaded of Examiner error. The Examiner finds, and we
agree, that
Ibrahim was used to teach that it is well-known to
simultaneously communicate with multiple input sources. The
teaching of simultaneous communication with multiple input
sources was then applied to enhance Spitzer’s electronic
module thereby allowing simultaneous wireless communication
with multiple input sources
(Ans. 5). Thus, contrary to Appellant’s contention, the Examiner provides a
rational underpinning to support the legal conclusion of obviousness. See
KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Such an
enhancement additionally flows from Ibrahim’s acknowledgment that “the
use of wireless communication devices” is “increasing] ” (Ibrahim 17).
Appellant finally argues that “Ibrahim is intended to allow
simultaneous communication with multiple input devices,” and thus teaches
away from “[incorporation of a selector configured to switch between
inputs to provide only a single input to the wearer” (Reply Br. 6). A
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reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not “criticize, discredit, or
otherwise discourage” investigation into the invention claimed. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant has not shown that
Ibrahim discourages investigation into the invention claimed. One skilled in
the art would understand that the reception of simultaneous communications
in no way discourages selection of one of the communications, as the two
concepts are not mutually exclusive.
Accordingly, we sustain the Examiner’s rejection of independent
claim 21, and claims 22, 23 and 41 not separately argued with particularity
(see App. Br. 20-21), and claim 47 not separately argued. See App. Br. 10.
CONCLUSION
The Examiner did not err in finding:
1. Spitzer and Ibrahim combinable as analogous art; and
2. motivation with a rational underpinning to combine Ibrahim with
Spitzer.
DECISION
The Examiner’s decision rejecting claims 21—23, 41, and 47 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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