Ex Parte Lamb et al

Patent Trials and Appeals Board

May 3, 2019

13941519 - (D) (P.T.A.B. May. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/941,519 07/14/2013 Michael Lamb
34018 7590 05/07/2019
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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.
Eco-15 81230.914US1 3004
EXAMINER
KINGSTON, SHAWNAM
ART UNIT PAPER NUMBER
2687
NOTIFICATION DATE DELIVERY MODE
05/07/2019 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):
chiipmail@gtlaw.com
j arosikg@gtlaw.com
clairt@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL LAMB, MICHAEL BAILEY,
JAY STONE, and CARLO PETRUCCI
Appeal 2018-007 681
Application 13/941,519
Technology Center 2600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
DIRBA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 20-37, which constitute all the claims
pending in this application. Claims 1-19 have been cancelled. App. Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 This Decision uses the following abbreviations: "Spec." for the original
specification, filed July 14, 2013; "Final Act." for the Final Office Action,
mailed May 19, 2016; "App. Br." for Appellants' Appeal Brief, filed Nov.
21, 2016 ( corrected by the updated Summary of Claimed Subject Matter
filed May 11, 2017); "Ans." for Examiner's Answer, mailed June 29, 2018;
and "Reply Br." for Appellants' Reply Brief, filed Aug. 29, 2018.
2 According to Appellants, the real party in interest is Ecolink Intelligent
Technology, Inc. App. Br. 3.
Appeal 2018-007 681
Application 13/941,519
BACKGROUND
Appellants' disclosed embodiments and claimed invention relate to
control of a movable barrier, such as a garage door. Abstract; Spec. ,r 2.
Claims 20 and 21, reproduced below, are representative of the claimed
subject matter:
20. A method, conducted by a movable barrier gateway device, for
controlling a movable barrier, comprising:
receiving, by a communication interface, a remote command
from a remote control device to move the movable barrier, the
remote command received over a network;
monitoring, by a barrier movement detector, for movement of
the movable barrier caused by a local control device after
receipt of the remote command; and
providing, by a processor, a signal to a movable barrier
controller to move the movable barrier after expiration of a
predetermined time period after receipt of the remote command
and when no movement of the movable barrier has occurred
during the predetermined time period.
21. The method of claim 20, further comprising:
ignoring, by the processor, the remote command when
movement of the barrier is detected by the barrier movement
detector after receipt of the remote command within the
predetermined time period.
App. Br. 11 (Claims App'x).
THE REJECTIONS
RI. Claims 20-26 and 29--35 stand rejected under 35 U.S.C. § 103
as obvious over Sheldon (US 2014/0190082 Al, filed Jan. 4, 2013,
published July 10, 2014). Final Act. 2-5, 7.
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RI. Claims 27, 28, 36, and 37 stand rejected under 35 U.S.C. § 103
as obvious over Sheldon and Laird (US 8,587,404 B2, filed Mar. 24, 2009,
issued Nov. 19, 2013). Final Act. 5-7.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Obviousness Rejection RI of Claims 20-26 and 29-35
Appellants argue claims 20-26 and 29-35 together as a group and
separately argue dependent claims 21 and 31 as a group. See App. Br. 7-9;
Reply Br. 2--4. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.3 7 ( c )(l)(iv ), we limit our discussion to independent claim 20 and
dependent claim 21. Independent claim 29 and dependent claims 22-26, 30,
and 32-35 stand or fall with claim 20, and dependent claim 31 stands or falls
with claim 21.
Claim 20
The Examiner found Sheldon teaches or suggests every limitation of
claim 20. Final Act. 3, 7-10. Appellants submit, "Sheldon does not teach
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any of Appellant's claim elements." App. Br. 7. Appellants' arguments do
not persuade us of Examiner error.
The Receiving Limitation
Claim 20 recites: "receiving, by a communication interface, a remote
command from a remote control device to move the movable barrier, the
remote command received over a network." App. Br. 11 (Claims App'x)
( emphasis added) (referred to in this Decision as the "receiving limitation").
Appellants argue, "Sheldon's device and system are completely
localized - there is no teaching or suggestion that the device or system is
capable of receiving remote commands from remote devices over a
network." App. Br. 7. From this, Appellants conclude Sheldon "cannot
teach" the receiving limitation. Id.
The Examiner disagrees, explaining that Sheldon's existing garage
door opener/closer receives the claimed commands and that the claimed
"network" includes "any network where a control device communicates a
control signal through an interface such as the one described by Sheldon."
Ans. 5; see Final Act. 3 (pointing to Sheldon's "door opener/closer with
transmitter" to satisfy the receiving limitation).
In response, Appellants allege error in the Examiner's mapping of
Sheldon to the limitations of claim 20--specifically, Appellants contend
Sheldon lacks "a single device" that performs both the receiving limitation
and the providing limitation. Reply Br. 2. Appellants explain Sheldon's
existing door opener is "separate and distinct" from the control device, so
the Examiner erred by citing the former for the receiving limitation and the
latter for the providing limitation. Id. at 2-3.
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These arguments fail to persuade us of Examiner error. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (If an examiner presents a
prima facie case, "the burden of coming forward with evidence or argument
shifts to the applicant."). With regard to the original argument-i.e.,
Sheldon is deficient because its device is "completely localized"-
Appellants fail to either explain their assertion or provide evidence in
support. Appellants' conclusory argument fails to identify error in the
Examiner's findings, and based on our review of the reference, we perceive
no such error. The Examiner pointed to Sheldon's "door opener/closer with
transmitter" to satisfy the receiving limitation, explaining the claimed
network may be "any wireless network." Final Act. 3 (citing Sheldon ,r,r 2,
3, 14--20), 8; see also Ans. 4--5 (providing further explanation). Appellants
do not dispute these factual findings-for example, Appellants do not
explain why the "door opener/closer with transmitter" ( e.g., wireless garage
door remote) does not teach the claimed "remote control device." In
addition, in the Reply Brief, Appellants do not dispute the Examiner's
finding that Sheldon teaches or suggests the receiving limitation. See Reply
Br. 2.
With regard to the modified argument-i.e., Sheldon is deficient
because it lacks a single device that performs both the receiving and
providing limitations-Appellants' argument is unpersuasive because it is
not commensurate with the broadest reasonable interpretation of the claim. 3
3 Furthermore, even if the claim had required a "single device" performing
these steps, Appellants would not have shown error because they fail to
demonstrate that Sheldon does not suggest such a limitation. Sheldon's
description of a single system that includes both control device 10 and the
existing garage door opener suggests a "single device" that includes both
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See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) ("In the
patentability context, claims are to be given their broadest reasonable
interpretations."). Although Appellants allege Sheldon is deficient on these
grounds, Appellants do not identify, nor could we find, any language in the
claim that requires a single device or excludes methods performed by
separate and distinct components. Indeed, claim 20 is to the contrary-it
specifies that the receiving limitation and the providing limitation are
performed by a communication interface and a processor, respectively. App.
Br. 11 (Claims App'x). Appellants reference4 the preamble's requirement
for a method "conducted by a moveable barrier gateway device" (see Reply
Br. 3), but Appellants' conclusory argument fails to explain why this
preamble should limit the claim. 5 See Allen Eng'g Corp. v. Bartell Indus.,
Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) ("Generally, the preamble does
components. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (A
claim is obvious where it "'simply arranges old elements with each
performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement.") ( quotes and
citation omitted).
4 Specifically, Appellants conclude that Sheldon lacks "a 'movable barrier
gateway device' having all of the elements as asserted." Reply Br. 3.
However, representative claim 20 is a method claim, not a system claim that
recites components of a moveable barrier gateway device, as argued by
Appellants. App. Br. 11 (Claims App'x).
5 Further, even if we were to conclude that all steps of the claimed method
must be "conducted by a movable barrier gateway device," Appellants fail to
provide a definition of this "device" that distinguishes Sheldon. For
example, Appellants do not provide a mechanism to distinguish between
sub-components of a single device, on the one hand, and separate devices,
on the other hand. As a result, Appellants have not shown that Sheldon does
not teach or suggest a single "device" that includes control device 10 and the
existing door opener.
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not limit the claims."). In addition, Appellants do not identify, nor could we
find, any passages in the Specification that would justify construing claim 20
to include one of the requirements proposed by Appellants. Accordingly, we
conclude the broadest reasonable interpretation of claim 20 includes a
method performed by separate and distinct components, and Appellants'
argument to the contrary does not persuade us of Examiner error.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the receiving limitation.
The Monitoring Limitation
Claim 20 recites: "monitoring, by a barrier movement detector, for
movement of the movable barrier caused by a local control device after
receipt of the remote command." App. Br. 11 (Claims App'x) (emphasis
added) (referred to in this Decision as the "monitoring limitation").
The Examiner found Sheldon's sensors teach the monitoring
limitation. Final Act. 3 (citing Sheldon ,r,r 3, 14--20). The Examiner notes
Sheldon's "sensor may comprise an accelerometer," and Sheldon monitors
the sensor "throughout operation of a movable door, including after receipt
of a remote command." Id. at 8 (citing Sheldon ,r,r 16-17). The Examiner
also found, in Sheldon, "detecting the 'orientation' of a door is the same as
detecting whether a door has moved from the opened to closed position." Id.
at 8-9 ( citing Sheldon ,r 14 ); see Ans. 6 ("[T]he sensors disclosed by
Sheldon do monitor for movement of a door because they are detecting
whether the door has changed orientation by moving from the opened to
closed position.").
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Appellants assert Sheldon's sensors monitor orientation, rather than
movement as required by the claim. App. Br. 7 ( citing Sheldon ,r 3). In the
Answer, the Examiner restates the explanation of the rejection. Ans. 6.
Appellants argue Sheldon determines if the door "has moved or has changed
orientations," where the claim requires monitoring for "the act or process of
moving." Reply Br. 3.
Appellants' arguments do not persuade us of Examiner error. As the
Examiner found, Sheldon teaches monitoring door orientation with an
accelerometer. Final Act. 8; Sheldon ,r 17. Appellants fail to respond to, or
identify any error in, this factual finding. An accelerometer measures
acceleration, which is the change in velocity per unit time, and can be used
to detect movement or vibration of an object. Accordingly, we agree with
the Examiner that Sheldon teaches or suggests monitoring for movement of
the door. See Final Act. 8.
In addition, although not necessary to our Decision, we are also not
persuaded by Appellants' argument that claim 20 requires detection of
movement that is currently in progress, rather than identifying movement
that has previously occurred. Appellants do not identify, nor could we find,
any limitation of the claim or passages in the Specification that would justify
importing such a requirement. Accordingly, we conclude the broadest
reasonable interpretation of claim 20 does not require monitoring for
movement that is currently in progress, rather than movement that
previously occurred. See Geuns, 988 F.2d at 1184 ("In the patentability
context, claims are to be given their broadest reasonable interpretations.").
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the monitoring limitation.
The Providing Limitation
Claim 20 recites: "providing, by a processor, a signal to a movable
barrier controller to move the movable barrier after expiration of a
predetermined time period after receipt of the remote command and when no
movement of the movable barrier has occurred during the predetermined
time period." App. Br. 11 (Claims App'x) (emphasis added) (referred to in
this Decision as the "providing limitation").
The Examiner found, in Sheldon, "sensing the orientation of the door
and automatically closing the door after the expiration of a time period must
occur after receipt of commands, which are occurring in order to open and
close the door on command." Final Act. 9. The Examiner also found
"sensing the orientation and then closing the door automatically after a
period of time is the same as determining the claimed 'when no movement
of the movable barrier has occurred during the predetermined time period."'
Id. at 9--10.
Appellants admit Sheldon teaches "closing a garage door after a
predetermined time period," but Appellants argue Sheldon's time period "is
not referenced to a remote command received over a network and, more
importantly, is not dependent on whether there has been any movement of
the garage door, and further, movement of the garage door in response to a
local command." App. Br. 8 ( emphases added). Appellants opted not to
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address the providing limitation in their Reply Brief, except discussed supra
with respect to the receiving limitation. See generally Reply Br.
We are not persuaded by Appellants' arguments. The Examiner
found a person of skill in the art would understand Sheldon to teach or
suggest opening a door with a command, continuously monitoring the
orientation of the door, and automatically closing the door after a delay
when the door has remained open. Ans. 8; Final Act. 9--10. Appellants do
not dispute any of these findings. See App. Br. 8. Instead, Appellants
contend Sheldon's time period "is not referenced to a remote command." Id.
But Appellants fail to either explain the meaning of this phrase or
demonstrate that claim 20 includes a requirement that anything be
"referenced to a remote command." Claim 20 recites providing the signal
"after expiration of a predetermined time period after receipt of the remote
command." App. Br. 11 (Claims App'x) (emphasis added). Under the
broadest reasonable interpretation, the term "after" imposes a temporal
requirement on elements of the claim----e.g., the remote command must be
received before the signal is sent-but does not impose a causal
requirement----e.g., the remote command need not cause the signal to be sent.
Appellants do not explain their assumption that the claim includes a
requirement that "the predetermined time period [be] ... referenced to a
remote command." Accordingly, we are not persuaded of error.
Similarly, we are not persuaded by Appellants' contention that
Sheldon's closing of a garage door "is not dependent" on the garage door's
movement because Appellants' conclusory argument fails to demonstrate
this is a requirement of the claim. See App. Br. 8. Claim 20 recites
providing the signal "when no movement of the movable barrier has
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occurred during the predetermined time period." App. Br. 11 (Claims
App'x). The Examiner found that Sheldon provides a signal when no
movement has occurred, i.e., when the door has remained open. Final Act.
9-10. Appellants do not dispute this finding, and we agree with the
Examiner that Sheldon teaches providing a signal to close the garage door
"when no movement ... has occurred," as required by the claim.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the receiving limitation.
Motivation to Modify
In the Reply Brief, Appellants present new arguments. In particular,
Appellants argue it would not have been obvious to modify Sheldon, and
Appellants contend that the rejection is based on improper hindsight because
the Examiner did not demonstrate that a problem was known in Sheldon.
Reply Br. 4. These new arguments are untimely and need not be considered.
See 37 C.F.R. § 4I.41(b)(2) ("Any argument raised in the reply brief which
was not raised in the appeal brief, or is not responsive to an argument raised
in the examiner's answer ... will not be considered by the Board for
purposes of the present appeal, unless good cause is shown."). In particular,
these arguments address the rejection as originally provided in the Final
Action, rather than positions raised in the Answer (compare Final Act. 3,
with Ans. 8-9), and Appellants have not shown good cause for failing to
provide these arguments in the Appeal Brief.
Further, even if these arguments had not been waived, we would not
have been persuaded of error. First, Appellants submit it would not have
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been obvious to modify Sheldon because the reference "already" achieves
automatic control of the door, which was the Examiner's stated rationale.
Reply Br. 4. However, this argument fails to explain why it would not have
been obvious to modify Sheldon to include all features required by the
claim. In particular, Sheldon describes a system for automatically closing a
garage door, but Sheldon does not provide exhaustive detail on all aspects of
its system. The Examiner concluded the claims are an obvious modification
of ( or elaboration on) the system taught by Sheldon. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,421 (2007) ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton.") Appellants do not
contend that the Examiner's proposed modifications are beyond the level of
skill of one of ordinary skill in the art, or that the modifications are more
than the use of known elements to yield predictable results.
Second, Appellants allege error based on the Examiner's failure to
demonstrate the problem was known in Sheldon; however, an express
teaching, suggestion, or motivation in the prior art is not a requirement for
an obviousness determination. See id. at 418-19 ("The obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents."). Finally,
Appellants contend the Examiner used "hindsight," but do not address the
reasoning provided except as noted above. Reply Br. 4. By not showing
error in the reasoning provided, Appellants have not shown error in the
conclusion as to obviousness. See In re Cree, Inc., 818 F.3d 694, 702 n.3
(Fed. Cir. 2016) (viewing an "impermissible hindsight" argument as
"essentially a repackaging of the argument that there was insufficient
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evidence of a motivation to combine the references"). Accordingly, these
arguments would not have persuaded us of error.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the limitations of claim 20, nor do we find
error in the Examiner's resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claim 20, and or independent claim 29 and dependent claims
22-26, 30, 32-35, which fall therewith.
Claim 21
Claim 21 recites: "ignoring, by the processor, the remote command
when movement of the barrier is detected by the barrier movement detector
after receipt of the remote command within the predetermined time period."
App. Br. 11 (Claims App'x) (emphasis added). The Examiner found
Sheldon's block 392 in Figure 7 teaches or suggests these claim limitations.
Final Act. 3, 10.
Appellants argue the Examiner failed to establish a prima facie case of
obviousness. App. Br. 8. In addition, Appellants submit Sheldon's Figure 7
describes a method of automatically closing the door after a particular time
period, but fails to teach or suggest ignoring a remote command to close a
garage door. App. Br. 9. Appellants opted not to address this claim in their
Reply Brief. See generally Reply Br. Appellants' arguments do not
persuade us of Examiner error.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
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Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). An Examiner's rejection establishes a
prima facie case when it provides notice of the reasons for the rejection, and
the rejection is deficient when it of "is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citations
omitted). If this initial burden is met, the burden of coming forward with
evidence or argument shifts to Appellants. See Oetiker, 977 F.2d at 1445;
see also Piasecki, 745 F.2d at 1472. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. Id.
Appellants contend the Examiner failed to establish a prima facie case
because the Examiner did not sufficiently explain the rejection. App. Br. 8-
9. We disagree. In the Final Office Action, the Examiner responds to
Appellants' prior arguments, articulating factual findings and identifying the
relevant portions of the reference. Final Act. 4, 10. This is sufficient to
make a prima facie case, and we are not persuaded by Appellants' argument
to the contrary.
Moreover, we are not persuaded by Appellants' remaining arguments
because Appellants fail to respond to the Examiner's factual findings and
fail to explain their conclusions. In particular, the Examiner found
Sheldon's flowchart skips (i.e., ignores) the command reflected by box 394
when the door is not still open (as determined in box 392). Id. at 10.
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Appellants allege, without explanation, that this analysis is incorrect, but this
fails to show error in the Examiner's rejection. 6
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 21, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner's obviousness rejection of dependent
claim 21 and dependent claim 31, which falls therewith.
Obviousness Rejection R2 of Claims 27, 28, 36, and 37
The Examiner rejects dependent claims 27, 28, 36, and 37 over a
combination of Sheldon and Laird. Final Act. 5-7. For each of these
claims, Appellants rely on the same arguments made with respect to
independent claim 20. App. Br. 8, 10. These arguments however, are not
persuasive for the reasons discussed above. Consequently, we find
Appellant's arguments do not show error in the Examiner's factual findings
and the conclusion of obviousness of dependent claims 27, 28, 36, and 37.
6 Specifically, Appellants state: "Figure 7 describes a method where a
garage door is automatically closed after a either a 'delay' time period, or a
'pause' time period, expires from when the door was opened. There is no
teaching or suggestion of ignoring a remote command to close a garage
door, and certainly no teaching or suggestion of ignoring a remote command
under certain circumstances." App. Br. 9. However, Appellants fail to
address the aspects of Figure 7 relied upon by the Examiner in the rejection,
and the Appellants' conclusory statements regarding the teachings of
Sheldon do not show error in the Examiner's rejection. See In re Oetiker,
977 F .2d at 1445 (If an examiner presents a prima facie case, "the burden of
coming forward with evidence or argument shifts to the applicant.").
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DECISION
We affirm the Examiner's decision rejecting claims 20-37.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See 3 7
C.F.R. § 41.50(±).
AFFIRMED
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