Ex Parte Kennard et al

Patent Trial and Appeal Board

Mar 24, 2017

12839536 (P.T.A.B. Mar. 24, 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.
12/839,536 07/20/2010 Clive Warden Kennard H0026310 4341-33400 8381
14941 7590 03/28/2017
HONEYWELL/CONLEY ROSE
Honeywell International Inc
115 Tabor Road
PO Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
SUN, LI P
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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):
patentservices-us @ honey well, com
dallaspatents@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIVE WARDEN KENNARD and
GARY D. SHUBINSKY
Appeal 2014-003451
Application 12/839,536
Technology Center 2100
Before MICHAEL J. STRAUSS, CATHERINE SHIANG, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1—3, 5—17, 19, and 20. Claims 4 and 18 are canceled.
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to an environmental sensor touchscreen
interface for public areas. Spec., Title. Claim 1, reproduced below with
limitations found to render the claim indefinite emphasized in italics, is
representative of the claimed subject matter:
1. A device comprising:
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Application 12/839,536
at least one environmental sensor;
a control processor that compares data from the at least
one environmental sensor with a reference value, the processor
providing an output indicating the environmental data exceeds
the reference value;
a communication interface coupled to the processor, the
communication interface transfers the output of the control
processor to a remotely located control panel; and
an interactive touch display coupled to the processor, the
interactive touch display further comprising a wall-mounted
enclosure with a front of the enclosure substantially covered by
a display screen, the display screen surrounded by a matching
bezel having a same general color and appearance as the display
screen, wherein the display depicts environmental data from the
at least one environmental sensor for a predetermined time
period after activation of the interactive touch display by a user
and a blank screen thereafter thereby blending into the wall and
easily escaping notice.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
McConnell
Pitroda
Stoner
Amundson
Lowe
US 5,773,730
US 6,925,439 B1
US 2009/0140060 A1
US 2009/0143918 A1
US 2011/0018462 A1
June 30, 1998
Aug. 2, 2005
June 4, 2009
June 4, 2009
Jan. 27, 2011
REJECTIONS
The Examiner made the following rejections:
Claims 1, 7, and 14 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Non-Final Act. 2—3.
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Application 12/839,536
Claims 1, 2, 5, 7, 8, 14—17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Stoner, Pitroda, and Lowe. Non-Final
Act. 4—12.
Claims 3,9, and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stoner, Pitroda, Lowe, and McConnell. Non-Final Act.
12-14.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stoner, Pitroda, Lowe, and Amundson. Non-Final Act.
14—15.
Claims 11—13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stoner, Pitroda, Lowe, McConnell, and Amundson. Non-
Final Act. 16—17.
APPELLANTS’ CONTENTIONS
1) In connection with the rejection under 35 U.S.C. § 112, second
paragraph, Appellants contend the disputed claim limitations “would be
well understood to those of skill in the art, to involve a device that would
not attract attention or that would be assumed by passers-by to be a non-
functioning device.” App. Br. 8.
2) In connection with the rejections under 35 U.S.C. § 103(a), Appellants
contend
a) Both Stoner and Pitroda teach away from use of a device in a public
space. App. Br. 9—10.
b) Lowe’s illuminated bezel fails to teach “a matching bezel having [the]
same general color and appearance as the display screen” as required
by claim 1. App. Br. 10.
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Application 12/839,536
c) The asserted combination of references is improper because none of
the references recognize the problem solved by the claimed invention.
App. Br. 13.
ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 7—14)
and Reply Brief (Reply Br. 1—5), the issues presented on appeal are:
1. Whether the Examiner erred in finding the disputed limitations render
the scope of the claims objectively undeterminable and, therefore,
indefinite under 35U.S.C. § 112, second paragraph.
2. Whether the Examiner erred in combining the teachings of Stoner,
Pitroda, and Lowe in rejecting independent claims 1, 7, and 14 under
35 U.S.C. § 103(a)
3. Whether the Examiner erred in finding Lowe teaches the disputed
limitation of independent claims 1, 7, and 14.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the Non-Final Office Action from which this appeal is taken
(Non-Final Act. 2—19) and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 17—22)
and concur with the conclusions reached by the Examiner. We highlight the
following for emphasis.
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Application 12/839,536
35 U.S.C. § 112, second paragraph
The Examiner finds the following limitations indefinite:
1. ‘“a front of the enclosure substantially covered by a display
screen’. . . because it is unclear to [the] Examiner what
constitutes ‘substantially covered by a display screen . . .
(Ans. 2—3) (emphases omitted); and
2. “‘the display . . . thereby blending into the wall and easily
escaping notice’. . . because, based on the context of Claim 1, it
is a subjective statement without any objective measuring
standard” (Ans. 3) (emphasis omitted).
In response, Appellants argue
[The disputed limitations] would be well understood to those of
skill in the art, to involve a device that would not attract attention
or that would be assumed by passers-by to be a non-functioning
device. Either understanding would be consistent with the intent
of the invention and the structure could be easily constructed
from the description by those of skill in the art.
App. Br. 8.
As stated by our reviewing court in Seattle Box Co., Inc. v. Indus.
Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984):
Definiteness problems often arise when words of degree are used
in a claim. That some claim language may not be precise,
however, does not automatically render a claim invalid. When a
word of degree is used the district court must determine whether
the patent’s specification provides some standard for measuring
that degree. The trial court must decide, that is, whether one of
ordinary skill in the art would understand what is claimed when
the claim is read in light of the specification.
Here, Appellants’ Specification provides no standard or guidance by which
the term “substantially,” used in claims 1, 7, and 14, can be measured or
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determined. {Compare Ans. 18 with App. Br. 6—7.) Nor, other than
Appellants’ conclusory assertion,1 is there any intrinsic and/or extrinsic
evidence relied upon by Appellants to show that such term has a known
meaning in the art. {See App. Br. 18.) Thus, we concur with the Examiner
that such relative expression amenable to two or more plausible claim
constructions is indefinite within the meaning of 35 U.S.C. § 112, second
paragraph. Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
[During prosecution of a patent application,] if a claim is
amenable to two or more plausible claim constructions [upon
giving it the broadest reasonable interpretation consistent with
the Specification], the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite[;]
see also In re Morris, 111 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the
applicants’ burden to precisely define the invention, not the PTO’s. See 35
U.S.C. § 112[,] 12 ... . [T]his section puts the burden of precise claim
drafting squarely on the applicant.”)
Fikewise, in connection with the recitation of “the display depicts
... a blank screen . . . thereby blending into the wall and easily escaping
notice,” it is well settled that claim language is indefinite when the meaning
depends entirely on a person’s purely subjective opinion, personal taste, or
opinion without any guidance being provided in the claim language or
written description. E.g., Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d
1370, 1378 (Fed. Cir. 2017) (claim indefinite absent “guidance to a person
1 Mere attorney arguments and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence).
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making aesthetic choices such that their choices will result in an
‘aesthetically pleasing’ look and feel of an interface screen”) (internal
citation omitted); Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373—
74 (Fed. Cir. 2014) (the phrase “unobtrusive manner” has too uncertain a
relationship and “does not provide a reasonably clear and exclusive
definition, leaving the facially subjective claim language without an
objective boundary”). Therefore, in the absence of guidance in determining
the metes and bounds of the requirement for “blending into the wall and
easily escaping notice,” we agree with the Examiner in finding the limitation
indefinite.
For the reasons discussed supra, we are not persuaded of Examiner
error and sustain the rejection of claims 1, 7, and 14 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.2
35 U.S.C. § 103(a)
In connection with contention 2(a) Appellants argue “Stoner et al.
teaches away from public spaces because it discourages the use of the Stoner
et al. controller 14 in public places” because (i) “the use of the Stoner
controller 14 [is] in a residential context” and (ii) Stoner’s Remote
Controller 14 might not be easily found such that “it could not serve its
intended purpose.” App. Br. 9. Appellants further argue “Pitroda also
teaches away from the claimed invention because its very nature discourages
the use of the Pitroda device in a wallmounted location in a public place”
2 Should prosecution be continued, the Examiner may want to consider
whether claims dependent from independent claims 1, 7, and 14 also run
afoul of 35 U.S.C. § 112, second paragraph, based on inherency of the
deficiencies found in their respective base claims.
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because it is used to process a universal electronic transaction card which
may include personal information of the user which, presumably, should be
protected from access by the public. App. Br. 9—10. The Examiner responds
by finding “[njowhere in Claims 1, 7[,] and 14 [do the claims recite] that the
device is limited to be used ONLY in public or commercial spaces.” Ans.
19. In connection with the Stoner reference, the Examiner further finds the
reference “teaches that the HVAC controller may be a thermostat, such as,
for example, a wall mountable thermostat, if desired” and “[t]hose of skill in
the art would recognize that such a building control system can be used both
in residential and commercial spaces.” Ans. 19. In connection with the
Pitroda reference the Examiner finds “Pitroda is only relied upon to teach:
the display depicting data for a predetermined time period after activation
of the interactive touch display by a user and a blank screen thereafter.”
Ans. 20.
As found by the Examiner (Ans. 19—20), the claims are silent
concerning use in a public place, much less require any structure specific to
a particular place or use. Accordingly, Appellants’ arguments are
unpersuasive as not commensurate in scope with the argued claim. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the
claims cannot be relied upon for patentability). Furthermore, Appellants fail
to provide sufficient evidence or reasoning explaining why either Stone or
Pitroda discourages the ordinary artisan from making the combination of
elements as claimed. See, e.g., In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994) (“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
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the path that was taken by the applicant.”) Instead, we agree with the
Examiner’s finding that one of ordinary skill in the art at the time of the
invention would have recognized Stoner’s building control system could be
used in both residential and commercial (e.g., “public”) spaces. Ans. 19.
We further agree with the Examiner that it would have been obvious to
modify Stoner’s display screen to display a blank screen after a time-out
period “for the purpose of conserving power consumed by display screen, as
taught by Pitroda.” Non-Final Act. 7. Therefore, for the reasons discussed
supra, Appellants’ contention 2(a) is unpersuasive of Examiner error.
In connection with contention 2(b) Appellants argue “Lowe et al. is
merely directed to a method and apparatus for illuminating a bezel.
However, illumination of a bezel has nothing whatsoever to do with
operation of a display that blends into a surrounding wall [as require by the
independent claims].” App. Br. 10. The Examiner responds by finding
Lowe discloses this limitation in that the brightness and color of
the bezel is set by an algorithm that evaluates the predominant
colors in the current image (displayed on the screen)). As
disclosed in Lowe, the bezel is illuminated to match the
predominant colors of image displayed on the screen, e.g., if the
image displayed on the screen is green, then the bezel would be
illuminated in green to match.
Ans. 21.
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Neither Appellants’ claims nor the Specification define what the display
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screen surrounded by a matching bezel having a same general color and
appearance as the display screen means. Lowe discloses “[if bezel
illumination is selected] ‘Based on Content’ 140 . . . , the brightness and
color of the bezel [10] is set by an algorithm that evaluates the predominant
colors in the current image [displayed on display panel 12].” Lowe 1 53.
Thus, under a broad but reasonable interpretation, Stoner teaches or suggests
the disputed limitation of a bezel having a same general color and
appearance as a display screen. Accordingly, Appellants’ contention 2(b) is
unpersuasive of Examiner error.
In connection with contention 2(c) Appellants argue the Examiner has
failed to establish a prima facie case of obviousness because (i) the prior art
fails to teach or suggest the limitations of the independent claims; and (ii)
“none of the cited references of Stoner et al., Pitroda or Lowe et al.
recognize the problem solved by the claimed invention.” App. Br. 13. The
Examiner responds by finding the reasons to combine Stoner, Pitroda, and
Lowe are to conserve energy (Stoner and Pitroda) and reduce distraction
(Stoner and Lowe). In response to Appellants’ argument concerning failure
of the prior art to recognize the problem solved by the invention, the
Examiner correctly cites to In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006)
for holding “[t]he reason or motivation to modify the reference may often
suggest what the inventor has done, but for a different purpose or to solve a
different problem, ft is not necessary that the prior art suggest the
combination to achieve the same advantage or result discovered by
applicant.” Ans. 22.
In connection with Appellants’ argument the prior art fails to teach or
suggest the limitation of the independent claims (App. Br. 13), such
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argument is conclusory and, absent sufficient evidence or reasoning in
support thereof, fails to persuade us of error in the rejection. See 37 C.F.R. §
41.37(c)(l)(iv); see also In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.” Appellants’ argument the Examiner erred because
the prior art fails to recognize the problem solved by the claimed invention
(App. Br. 13) is likewise unpersuasive. In determining obviousness:
[t]he question is not whether the combination was obvious to the
patentee but whether the combination was obvious to a person
with ordinary skill in the art. Under the correct analysis, any
need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). See also In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996)3; In re Beattie, 974 F.2d 1309,
1312 (Fed. Cir. 1992)4. Here, the Examiner correctly finds the reason to
combine (i) the teachings of Stoner and Pitroda is because the combination
“conserve[es] power consumed by display screen” (Non-Final Act. 7) and
(ii) the teachings of Stoner and Lowe “for the purpose of reducing]
distraction away from the viewed picture” (Non-Final Act. 8). Therefore,
Appellants’ contention 2(c) is unpersuasive of Examiner error.
3 “In determining whether the subject matter of a . . . claim is obvious,
neither the particular motivation nor the avowed purpose of the patentee
controls. What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is . . . [unpatentable] under § 103.”
4 “[T]he law does not require that the references be combined for the reasons
contemplated by the inventor.”
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Summary
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the rejections of independent claim 1 and, for
the same reasons, independent claims 7 and 14 under 35 U.S.C. §§ 103(a)
and 112, second paragraph, together with the rejections of dependent claims
2, 3, 5, 6, 8—13, 15—17, 19, and 20 under 35 U.S.C. § 103(a), these
dependent claims not argued separately with particularity.
CONCLUSIONS
1. The Examiner did not err in finding the disputed limitations render
the scope of the claims indefinite under 35 U.S.C. § 112, second
paragraph.
2. The Examiner did not err in combining the teachings of Stoner,
Pitroda, and Lowe in rejecting independent claims 1,7, and 14 under
35 U.S.C. § 103(a).
3. The Examiner did not err in finding Lowe teaches the disputed
limitation of independent claims 1, 7, and 14.
DECISION
We affirm the Examiner’s decision to reject claims 1—3, 5—17, and 19.
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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