Ex Parte Kiesel

Patent Trial and Appeal Board

Nov 10, 2016

12954333 (P.T.A.B. Nov. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/954,333 11/24/2010 Jason A. Kiesel
30764 7590 11/15/2016
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 EL CAMINO REAL, SUITE 200
SAN DIEGO, CA 92130
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
27YE-162496 5200
EXAMINER
AJIBADE AKONAI, OLUMIDE
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
11/15/2016 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):
DOCKETING@SHEPPARDMULLIN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON A. KIESEL
Appeal2015-006889
Application 12/954,333
Technology Center 2600
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-006889
Application 12/954,333
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 7-25 and 27--41. Claims 1---6 and 26 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Exemplary Claim
Exemplary claim 7 under appeal reads as follows (emphasis added) 1:
7. A method for receiving civic incident reports from
a user's mobile device, comprising:
providing a reporting application on the mobile
device;
providing a menu of civic infrastructure problems
and subsequent descriptors for selection by the user;
enabling an imaging mode of the mobile device
determines if an image is appropriate for the selected
civic infrastructure problem; and
transmitting the civic infrastructure problem and
descriptors for selection by the user;
wherein the civic infrastructure problem is
selected from the group consisting of: potholes, graffiti,
obscured traffic signs, broken or burnt out lights, and
animal control issues.
1 The limitation "enabling an imaging mode of the mobile device determines
if an image is appropriate for the selected civic infrastructure problem,"
appears to include a typographical error. We treat the limitation as reciting
"enabling an imaging mode of the mobile device [] if an image is
appropriate for the selected civic infrastructure problem."
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Application 12/954,333
Rejections on Appeal
1. The Examiner rejected claims 7-25, 27-32, and 39--41 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Smith
(US 2006/0015254 Al; Jan. 19, 2016) and Lerg (US 6,288,643 Bl; Sept. 11,
2001 ). 2
2. The Examiner rejected claims 33-38 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Smith, Lerg, and Berger
(US 2009/0117923 Al; May 7, 2009). 3
Appellant's Contentions
1. Appellant contends that the Examiner erred in rejecting claim 7
under 35 U.S.C. § 103(a) because:
The Final Action admitted that Smith fails to teach a CIVIC
infrastructure problem that is "selected from the group consisting
of: potholes, graffiti, obscured traffic signs, broken or burnt out
lights, and animal control issues," and attempts to cure the noted
deficiency with Lerg. However, a close inspection of Lerg
reveals that it does not disclose the missing limitation. In
particular, Lerg does not teach or suggest reporting a civic
infrastructure problem.
To the above, Lerg appears to be directed to a method for
detecting a graffiti-making act such as the spray of a spray paint
can, the writing with a felt-marker pen on a surface, and the
scratching with an abrasive instrument on a surface. The system
ofLerg necessarily includes one or more sensors adapted to sense
2 The patentability of claims 8-25, 27-32, and 39--41 is not separately
argued from that of claim 7. See Appeal Br. 11-14. Except for our ultimate
decision, claims 8-25, 27-32, and 39--41 are not discussed further herein.
3 The patentability of claims 34--38 is not separately argued from that of
claim 7. See Appeal Br. 13-14. Except for our ultimate decision, claims
34--38 are not discussed further herein.
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Application 12/954,333
the graffiti-making act and transmit a signal representative of the
graffiti. As such, Lerg is not directed toward allowing a "user"
to report a civic infrastructure problem. Instead, Lerg is
directed toward the use of sensors for detecting criminal acts
such as a graffiti-making act. This is not the same as reporting
a civic infrastructure problem. While a civic infrastructure
problem might be the result of a criminal act, it is not
tantamount to the act itself. By way of example, a criminal act
such as spraying graffiti is of course, not the same as the
resulting graffiti (i.e., the civic infrastructure problem).
Accordingly, Lerg's disclosure of a sensor used to detect the
criminal act of spray-painting a public wall is not a criminal
infrastructure problem.
Appeal Br. 11-12, Appellant's emphasis and citations omitted, panel's
emphasis added.
2. Appellant also contends that the Examiner erred in rejecting claim 7
under 35 U.S.C. § 103(a) because:
[T]he Final Action asserted that Smith teaches "enabling an
imaging mode of the mobile device determines if an image is
appropriate for the selected civic infrastructure problem." ...
Smith merely suggests "taking pictures ... of the event when then
mobile device enters the reporter mode .... " Accordingly, Smith
simply allows a user to capture via pictures, video, or sound
recording, an event. However, nowhere does Smith teach or
even remotely contemplate making any sort of determination
when enabling an image mode, let alone determining "if an
image is appropriate for the selected civic infrastructure
problem."
Appeal Br. 12, Appellant's emphasis and citations omitted, panel's emphasis
added.
3. Appellant also contends that the Examiner erred in rejecting claim 7
under 35 U.S.C. § 103(a) because:
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[T]he Final Action already analogized the mobile device (such
as a PDA or phone) of Smith to the claimed mobile device of
independent claim 7. However, in relying on Lerg, the Final
Action contradictorily asserted that Lerg's base unit 120 is now
interpreted as reading on the claimed mobile device. This is
improper as the Final Action has not set forth a clear/consistent
ground of rejection.
Additionally, there is no motivation to combine the teachings
of Lerg and Smith and in fact, Lerg teaches away from Smith.
That is, the base unit of Lerg is explicitly directed to a
"stationary" or "fixed" unit meant to operate in conjunction with
sensors for determining, e.g., when a wall (upon which the base
unit is affixed or proximately located) is being tampered with
such as when a vandal is spray painting the wall. Thus, while
Smith is premised upon a person utilizing his/her mobile device
to report, e.g., a natural disaster, Lerg is instead premised upon
a fixed sensory device for detecting the actual occurrence of,
e.g., graffiti. Again, there would be no motivation to combine
the teachings of such disparate prior art references, and if the
teachings were to be combined the operational principals of
each of the prior art references would be vitiated. Thus, the
cited prior art cannot be combined to teach or suggest a CIVIC
infrastructure problem that is "selected from the group consisting
of: potholes, graffiti, obscured traffic signs, broken or burnt out
lights, and animal control issues."
Appeal Br. 13, Appellant's citations omitted, panel's emphasis added.
4. In the Reply Brief, further as to above contention 1, Appellant also
contends that the Examiner erred in rejecting claim 7 under
35 U.S.C. § 103(a) because:
Lerg's disclosure is replete with explicit statements which
indicate that the system/method of Lerg is directed to catching
the "act" rather than the end result. For example, Lerg
describes using sensors to sense the body heat of a person, the
sound of spray cans spraying paint, the scratching of a felt marker
on a surface. Lerg further describes triggering an alarm if a
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gratliti-making '"act" has been detected, and in some
embodiments relies on a video camera for "recording and/ or
monitoring the tagger . . . a flash camera to capture a still image
of the tagger .... " Moreover still, if a video camera or flash
camera is focused on the presence/ detecting the presence of a
person committing the act, that video camera or flash camera
would likely not be able to capture the graffiti on the wall itself
due to the placement of the video camera or flash camera .
. . . [T]he only way to capture video or photos of the tagger's face
would be to point the video camera or flash camera away from
the wall and graffiti.
Again, it is clear that Lerg is concerned with capturing the
person/the act, but certainly not the graffiti itself. Hence, and
contrary to the position set forth in the Examiner's Answer,
recording the person committing an act is not "essentially the
recording of the evidence of graffiti." In fact, it would be well
understood that the system/method of Lerg would have no way
of knowing if in fact, an act of graffiti was actually committed
as Lerg cannot capture evidence of the graffiti itself.
Reply Br. 3--4, Appellant's emphasis and citations omitted, panel's emphasis
added.
5. In the Reply Brief, further as to above contention 2, Appellant also
contends that the Examiner erred in rejecting claim 7 under
35 U.S.C. § 103(a) because:
[T]he Examiner's Answer clearly lays out how a user decides to
put a device into reporter or video mode, and subsequently takes
a video/picture. Accordingly, it is impossible for the system of
Smith to determine if an image mode is appropriate because the
user has already selected the mode to capture video/photo(s).
Additionally, nowhere does Smith teach or suggest, nor does
the Examiner's Answer address the failing of Smith to teach or
suggest that the image mode is appropriate for the selected civic
infrastructure problem.
Reply Br. 4, Appellant's citations omitted, panel's emphasis added.
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6. In the Reply Brief~ further as to above contention 3, Appellant also
contends that the Examiner erred in rejecting claim 7 under
35 U.S.C. § 103(a) because:
First, the Examiner's Answer fails to rebut or address
Appellant's contention (set forth in the Appeal Brief) that the
Final Action did not set forth a clear/consistent ground of
rejection by confusingly/contradictorily relying on Lerg's base
unit 102 to allegedly read on the claimed mobile device in one
instance, and relying on Smith's mobile device to allegedly read
on the claimed mobile device in another instance. Hence,
Appellant maintains that the Final Action cannot stand.
Second, the Examiner's Answer merely paraphrases the
reasoning set forth in the Final Action to again allege that
Lerg/Smith are generally analogous prior art. However, in
addition to the arguments already set forth in the Appeal Brief,
Appellant submits that as alluded to above, Lerg is explicitly
directed to systems and methods for catching the perpetrator of
some act.
It should be abundantly clear that even if a user, according to
Smith, were to take a picture of some act, it would do nothing
to solve or aid in solving the problem identified by Lerg.
Likewise, Lerg, because its explicitly stated concern is catching
a tagger/the act specifically when no witness exists, it's
capturing of video would in no way provide the requisite
motivation, nor could it be used to modify the system of Smith.
Reply Br. 5, Appellant's emphasis and citations omitted, panel's emphasis
added.
7. Appellant contends that the Examiner erred in rejecting claim 33
under 35 U.S.C. § 103(a) for at least the reasons described with regard to
claim 7. See Appeal Br. 13.
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Application 12/954,333
Issue on Appeal
Did the Examiner err in rejecting claims 7 and 33 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We disagree with Appellant's
conclusions. Except as noted herein, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which the appeal is
taken (Final Act. 2-22); and (2) the reasons set forth by the Examiner in the
Examiner's Answer (Ans. 2-5) in response to the Appellant's Appeal Brief.
We concur with the conclusions reached by the Examiner. We highlight the
following.
As to Appellant's above contentions 1 and 4, we are not persuaded the
Examiner erred. Appellant's argument that Leng fails to teach reporting a
civic infrastructure problem improperly attacks the cited references
individually, vvhere the rejection is based on a combination of cited
references. In particular, Appellant attacks Leng for failing to teach claim
limitations (i.e., "providing a menu of civic infrastructure problems ... for
selection by the user," and "wherein the civic infrastructure problem is
selected from the group consisting of ... graffiti") when the Examiner did
not rely solely on Leng to teach the aforementioned claim limitations. See
Appeal Br. 11-12; Reply Br. 3--4. Rather, the Examiner relied upon Smith
in combination with Leng to show the aforementioned claim limitations
were obvious. In particular, the Examiner relied on Smith to teach a mobile
device configured to provide a menu of civic infrastructure problems (e.g., a
menu of categories of detected conditions) for selection by a user, and
further relied on Leng to teach a device that records a graffiti-making act in
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order to prevent graffiti. See Final Act. 4--5. It is well established that one
cannot show non-obviousness by attacking references individually where the
rejection is based upon the teachings of a combination of references. See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller
642 F.2d 413, 425 (CCPA 1981). As Appellant's argument does not address
the actual reasoning of the Examiner's rejection, we do not find it
persuasive.
As to Appellant's above contentions 2 and 5, we are also not
persuaded the Examiner erred. Appellant's argument is not commensurate
with the scope of claim 7. More specifically, claim 7 fails to recite the
feature that Appellant argues distinguishes the claim from Smith (i.e., a
mobile device determining if an imaging mode is appropriate). See Appeal
Br. 12; Reply Br. 4. Further, assuming arguendo that Appellant's argument
was commensurate with the scope of claim 7, we do not find it persuasive.
Instead, we agree with the Examiner's findings that Smith teaches the
mobile device engaging an imaging mode (i.e., "reporter mode") in response
to a determination that an image is appropriate (e.g., a reception of an
instruction by a user to enter a "reporter mode," a determination that the user
has taken a digital photograph or has recorded sound or digital video with
the device, or a determination that the user has initiated event reporting
software on the mobile device). See Final Act. 4; Ans. 3--4.
As to Appellant's above contentions 3 and 6, we are also not
persuaded the Examiner erred. We disagree with Appellant that the Final
Office Action contradictorily asserted both Smith's mobile device and
Lerg's base unit as teaching the claimed "mobile device." See Appeal
Br. 13; Reply Br. 5. Instead, as described above, the Examiner found Smith
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teaches a mobile device configured to provide a menu of civic infrastructure
problems (e.g., a menu of categories of road conditions), and further found
Lerg teaches a device that reports graffiti via recording a graffiti-making act.
See Final Act. 3-5. Regarding Appellant's argument that there is no
motivation to combine the teachings of Lerg and Smith because Lerg teaches
a fixed base unit configured to detect graffiti where Smith teaches a mobile
unit configured to detect a specified condition, we are not persuaded by this
argument either. See Appeal Br. 13; Reply Br. 5. "[A] determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements." In re Mouttet, 686 F. 3d 1322,
1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness
whether a secondary reference's features can be bodily incorporated into the
structure of the primary reference. In re Keller, 642 F.2d 413, 425. Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Id. Appellant has not
provided sufficient evidence or technical reasoning to demonstrate that
modifying Smith's mobile device to report a detected incident of a graffiti-
making act on a surface based on the teaching of Lerg would be beyond the
skill of a person of ordinary skill in the relevant art.
Accordingly, we sustain the rejection of claim 7.
As to Appellant's above contention 7, we are also not persuaded the
Examiner erred for at least the reasons described above with respect to
Appellant's above contentions 1 and 4. Accordingly, we also sustain the
rejection of claim 33.
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 7-25 and 27--41 as
being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 7-25 and 27--41 are not patentable.
DECISION
We affirm the Examiner's rejections of claims 7-25 and 27--41 as
being unpatentable under 35 U.S.C. § 103(a).
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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