Ex Parte Mattern

Patent Trial and Appeal Board

Sep 4, 2018

13621694 (P.T.A.B. Sep. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/621,694
12099 7590
Timothy S. West by
Porter Hedges LLP
P. 0. Box 4078
FILING DATE
09/17/2012
09/06/2018
Houston, TX 77210-4078
FIRST NAMED INVENTOR
Jeremy Keith Mattern
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.
013026-0180 5446
EXAMINER
PICON-FELICIANO, ANA J
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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):
patmail@porterhedges.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY KEITH MATTERN
Appeal2018-001304
Application 13/621,694 1
Technology Center 2400
Before DAVID M. KOHUT, JENNIFER S. BISK, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-18, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Jeremy Keith Mattern as the real party in interest. Br.
3.
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Application 13/621,694
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to an
improved system and method for implementing pass control. Spec. ,r 1.
According to Appellant,
[ d]isclosed herein is an Automated Installation Entry (AIE)
device. The AIE device can comprise an enclosure comprising
a first surface viewable to an entrant from a first surface of the
enclosure, and a second surface viewable to a guard from a
second surface behind the enclosure. A first screen can be
mounted within the first surface. A card reader and a biometric
reader can be mounted within the first surface. A second screen
can be mounted within the second surface, and a warning
indicator can be mounted to the enclosure.
Spec. ,r 5. Claim 1 is exemplary:
1. An automated installation entry system comprising:
an enclosure comprising a first surface viewable to an
entrant from a first front surface of said enclosure, and a second
surface viewable to a guard from a second surface behind said
enclosure;
a first screen mounted within said first surface, said first
screen operable in a secured area pass control implementation
to display directions to an entrant;
a card reader mounted within said first surface;
a biometric reader mounted within said first surface; and
a second screen mounted within said second surface. 2
said second screen also operable in said secured area pass
control method, to display directions to a guard.
2 We leave it to Appellant to determine whether the"." is a typographical
error.
2
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Application 13/621,694
References and Rejections
Claims 1-3, 5-7, and 9 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over the collective teachings of Register, Jr.
et al. (US 2006/0213986 Al; pub. Sept. 28, 2006) ("Register"), Wadia (US
2013/0265136 Al; pub. Oct. 10, 2013) ("Wadia"), and Berini et al. (US
2012/0293642 Al; pub. Nov. 22, 2012) ("Berini"). Final Act. 3-10.
Claims 12-16 and 18 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over the collective teachings of Register, Berini, and
Wadia. Final Act. 10-18.
Claims 4 and 10 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over the collective teachings of Register, Wadia, Berini,
and Cochran et al. (US 2008/0164974 Al; pub. July 10, 2008) ("Cochran").
Final Act. 19-20.
Claims 8 and 11 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over the collective teachings of Register, Wadia, Berini,
and Sajkowsky (US 2009/0266882 Al; pub. Oct. 29, 2009) ("Sajkowsky").
Final Act. 21-23.
Claim 17 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over the collective teachings of Register, Berini, Wadia, and
Cochran. Final Act. 20-21.
3
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ANALYSIS 3
We disagree with Appellant's arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken (Final Act. 3-8) and (ii) the Answer (Ans. 24--35) to the
extent they are consistent with our analysis below. 4
Obviousness
On this record, the Examiner did not err in rejecting claim 1.
I
Appellant contends Register does not teach "a first screen mounted
within said first surface, ... a card reader mounted within said first surface;
a biometric reader mounted within said first surface," as recited in claim 1.
See Br. 14. In particular, Appellant argues "while Register does teach an
enclosure comprising a first screen, card reader, and biometric reader,
Register fails to teach such devices all mounted on the same surface."
Br. 14.
Appellant has not persuaded us of error. In response to Appellant's
arguments, the Examiner explains Register and Berini collectively teach the
disputed limitations (discussed in detail below). See Ans. 25-26. Appellant
does not dispute that explanation. As a result, Appellant fails to show
3 Throughout this opinion, we refer to (1) the Final Rejection dated February
16, 2016 ("Final Act."); (2) the Appeal Brief dated January 23, 2017 ("Br.");
and (3) the Examiner's Answer dated June 6, 2017 ("Ans.").
4 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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Application 13/621,694
Examiner error. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed.
Cir. 1991) ("It is not the function of this court [or this Board] to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.").
Further, we agree with the Examiner's explanation. The Examiner
finds, and we agree, Berini's Figure 1 shows a screen 118, a smartcard
reader 120 (which teaches the claimed "card reader"), and a finger print
sensor 134 ( which teaches the claimed "biometric reader") are mounted
within the same surface. See Ans. 25-26; Berini Fig. 1, ,r 61. Therefore,
We agree with the Examiner that Register and Berini collectively teach "a
first screen mounted within said first surface, ... a card reader mounted
within said first surface; a biometric reader mounted within said first
surface," as required by claim 1. 5
II
Appellant contends Register does not teach "said second screen also
operable in said secured area pass control method, to display directions to a
guard," as recited in claim 1 (emphasis added). See Br. 14--15. In
particular, Appellant argues in Register's paragraphs 3 and 111,
the display, "indicates whether the biometric(s) stored in the
card match the biometric(s) submitted by the individual
presenting the card." Per the teachings of Register, all
indications on screen are merely such purpose. There are no
specific teachings that any specific directives are given to the
guard.
5 Appellant does not challenge the propriety of combining the teachings of
Register and Berini.
5
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Br. 15.
states:
Appellant has not persuaded us of error. Register's paragraph 111
operators ... may view a display that at least indicates whether
the biometric(s) stored in the card match the biometric(s)
submitted by the individual presenting the card. This indication
may consist of at least a portion of the display screen turning a
particular color based upon the result of the biometric
comparison, such as green when the biometrics match, and red
when the biometrics do not match. Alternatively to or in
addition to the color that may be presented to the operator via
the display screen, words, symbols and/or objects may also be
presented to the operator to further indicate the results of the
biometric comparison. For instance, a 'yes," "okay," thumbs-
up symbol, or the like may be displayed on the screen when the
biometrics match, and a "no, ""stop, "stop sign symbol, or the
like may be displayed on the screen when the biometrics do not
match.
Register ,r 111 ( emphases added).
Because Register teaches displaying directions, such as "yes" or
"no" to the operator who acts as a guard, Register teaches "display
directions to a guard," as required by claim 1. Therefore, Appellant's
above argument is unpersuasive.
III
First, Appellant contends:
Claim 1 recites the limitations, "an enclosure comprising a first
surface ... , and a second surface ... , a first screen mounted
within said first surface," and "a second screen mounted within
said second surface." The Examiner asserts Register teaches
such limitations. However, while Register teaches a first and
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second screen, the first screen of Register is in a first enclosure,
and the second screen of Register is in a second enclosure.
Br. 15-16.
Appellant has not persuaded us of error. In response to Appellant's
arguments, the Examiner explains Register and Wadia collectively teach "an
enclosure comprising a first surface ... and a second surface ... a first
screen mounted within said first surface ... a second screen mounted within
said second surface," as required by claim 1. See Ans. 31; Wadia ,r 90, Fig.
2 (showing the LCD display 216 is mounted within the left-side surface, the
service monitor 226 is mounted within the right-side surface, and the same
enclosure includes both the left-side and right-side surfaces). Appellant does
not dispute that explanation. In fact, Appellant acknowledges "Wadia
teaches an enclosure having two screen[ s ]" (Br. 16). Therefore, Appellant
has not shown Examiner error.
Second, Appellant argues:
Register fails to teach two screens operating to perform a pass
control method. Instead, the screens are duplicative. Register
merely describes both screens displaying the same information,
namely displaying a visual representation that "indicates
whether the biometrics stored in the chard match the biometrics
submitted by the individual presenting the card." By
comparison, Applicant claims screens within a pass control
method giving different information within the method. The
Examiner claim such defects are cured by Wadia and Berini,
however such combination amounts to a search for parts that, as
used in their respective applications, would not go together to
teach Applicant's invention.
Specifically, Wadia teaches ... however the screen operating
independently of each other, performing two completely
different and separate methods. The first screen is viewable by
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a user of an ATM, for use in a method of performing banking
transactions. The second screen of Wadia is a screen viewable
to a technician, for use in a method of repairing an ATM
machine. Wadia does not teach the two screens as operating
together within a common method.
Br. 16 ( emphases added) ( original emphases omitted).
Appellant's above arguments are unpersuasive because they are
not commensurate with the scope of the claim. Claim 1 does not
require "screens within a pass control method giving different
information within the method" or "the two screens as operating
together within a common method," as Appellant argues (Br. 16)
( original emphases omitted).
error.
IV
Appellant contends Wadia is not analogous art. See Br. 16-18.
For the reasons discussed below, Appellant has not persuaded us of
"Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed ['Field Test'] 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 ['Problem Test']."
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citations omitted)
(emphases added). "Whether a reference in the prior art is 'analogous' is a
fact question." In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citations
omitted).
First, regarding the Field Test, Appellant argues:
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Applicant's invention is in the field of law enforcement and
facility security, namely improving flow into a secured area. By
comparison, W adia is in the field of automated banking and
repairing machines in automated banking.
Br. 17; see also Br. 16.
Appellant's attorney arguments are unpersuasive, because Appellant
does not provide the requisite analysis under the case law and does not
provide evidence to support the arguments. See In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004) (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.") (citations omitted); In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) ("attorney argument [is] not the kind of factual evidence
that is required to rebut a prima facie case of obviousness"); Meitzner v.
Mindick, 549 F.2d 775,782 (CCPA 1977) ("Argument of counsel cannot
take the place of evidence lacking in the record.").
In addition, in response to Appellant's arguments, the Examiner
explains Wadia is analogous art under the Field Test. See Ans. 31-33. In
particular, the Examiner cites explanations of Wadia's subject matter in the
publication, including Wadia's Abstract, Figures, and paragraphs to show
the embodiments, function, and structure of Wadia's invention. See Ans.
31-33; Bigio, 381 F.3d at 1325. The Examiner determines Wadia relates to
"authenticating a user's identity for controlling access." Ans. 32. Appellant
does not dispute the Examiner's explanation. As a result, Appellant fails to
show Examiner error.
Second, regarding the Problem Test, Appellant argues:
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The Applicant tried to solve the problem of increasing the
efficiency of pass control into a secured facility. The second
screen in applicant's claim gives directions to a guard. By
comparison, the second screen of Wadia is not related to pass
control or increasing efficiency of a pass control method, but
instead related to helping a technician have access to an ATM
for the purpose of repairing the ATM.
Br. 17; see also Br. 16.
Appellant's attorney arguments are unpersuasive because Appellant
does not provide evidence to support the arguments. See Geisler, 116 F .3d
at 1470; Meitzner, 549 F.2d at 782. Further, Appellant's arguments focus on
Wadia's second screen, and do not persuasively explain why Wadia is not
"reasonably pertinent to the particular problem with which the inventor is
involved." Klein, 647 F.3d at 1348.
In addition, in response to Appellant's arguments, the Examiner
explains Wadia is analogous art under the Problem Test. See Ans. 31-35.
In particular, the Examiner cites Wadia's Abstract, Figures and paragraphs,
and determines Wadia is analogous art because it "solv[es] problems in
authentication and access control." Ans. 35. Appellant does not dispute the
Examiner's explanation. As a result, Appellant fails to show Examiner
error.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner's rejection of independent claim 1, and independent
claim 12 for similar reasons. 6
We also sustain the Examiner's rejection of corresponding dependent
claims 2-11 ( depending on claim 1) and 13-18 ( depending on claim 12), as
6 Appellant argues "Claim 12 recites similar limitations and are believed to
be allowable for at least the same reasons." Br. 18.
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Appellant merely argues they "are dependent on 1 or 12 and therefore also
believed to be allowable." Br. 18.
DECISION
We affirm the Examiner's decision rejecting claims 1-18 under
35 U.S.C. § 103.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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