Ex Parte Mese et alDownload PDFPatent Trial and Appeal BoardJan 23, 201814510347 (P.T.A.B. Jan. 23, 2018) Copy Citation 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. 14/510,347 10/09/2014 John Carl Mese RPS920140176-US-NP 5684 109808 7590 01/25/2018 LENOVO/P ANGRLE Pangrle Patent, Brand & Design Law, P.C. 3500 W Olive Ave 3rd Floor Burbank, CA 91505 EXAMINER DIABY, MOUSTAPHA ART UNIT PAPER NUMBER 2676 NOTIFICATION DATE DELIVERY MODE 01/25/2018 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): brian@ppbdlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN CARL MESE, NATHAN J. PETERSON, RUSSELL SPEIGHT VANBLON, and ROD D. WALTERMANN Appeal 2017-0075411 Application 14/510,347 Technology Center 2600 Before CAROLYN D. THOMAS, IRVIN E. BRANCH, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s Final rejection of claims 1—3, 9-11, 17, and 21—29, which are all of the pending claims. See App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Lenovo Singapore Pte. Ltd. is identified as the real party in interest. See App. Br. 2. Appeal 2017-007541 Application 14/510,347 STATEMENT OF THE CASE Introduction The Application is directed to detecting a “communication instability (e.g., a lack of communication stability)” during a phone call, and recording audio using “recording circuitry [which] may be local to a [phone] device and/or optionally remote from a [phone] device (e.g., consider an allied device, etc.).” Spec. 120. Claims 1,10, and 17 are independent. Claim 1 is reproduced below for reference (formatting added): 1. An apparatus comprising: an allied device that operatively couples to a phone that comprises communication circuitry, wherein the allied device comprises a microphone, detection circuitry that detects a communication instability, and recording circuitry that records audio via the microphone responsive to detection of a communication instability and wherein the communication instability comprises a power supply instability of the phone. References and Rejections The following is the prior art relied upon by the Examiner in rejecting the claims on appeal: Kedem US 2006/0019650 A1 Jan. 26,2006 Boland et al. US 2010/0118158 A1 May 13, 2010 “Boland” Otomo et al. US 2014/0012921 Al Jan. 9, 2014 “Otomo” 2 Appeal 2017-007541 Application 14/510,347 Mitchell et al. US 2014/0052330 A1 Feb. 20, 2014 “Mitchell” Davis et al. US 2014/0280529 Al Sept. 18, 2014 “Davis” Claim 9 stands rejected under 35 U.S.C. §112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. App. Br. 2. Claims 1—3, 9—11, 17, 22, and 25—27 stand rejected under 35 U.S.C. § 103 as being unpatentable over Boland and Kedem. Final Act. 3. Claims 21 and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Boland, Kedem, and Davis. Final Act. 6. Claim 23 stands rejected under 35 U.S.C. § 103 as being unpatentable over Boland, Kedem, and Mitchell. Final Act. 7. Claims 28 and 29 stand rejected under 35 U.S.C. § 103 as being unpatentable over Boland, Kedem, and Omoto. Final Act. 8. ANALYSIS We review the appealed rejection for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Except as indicated below with respect to the indefmiteness rejection of claim 9, we are not persuaded the Examiner erred; we adopt the Examiner’s findings and conclusions with respect to the obviousness rejections as our own, and we add the following primarily for emphasis. 3 Appeal 2017-007541 Application 14/510,347 I. 112 Rejection The Examiner concludes the claim 9 recitation “a communication instability that comprises a disconnection” is indefinite because claim 9 depends from claim 1, and it is unclear “how a communication instability can be a disconnection while claim 1 discloses the communication instability is a power supply.” Final Act. 3. Appellants argue the Examiner’s rejection is in error, because “one skilled in the art would understand what is claimed when the claim is read in light of the [Specification.” App. Br. 6—7 (quotations omitted). Appellants contend that the “facts of the instant case demonstrate that a communication instability can include a power supply instability of a phone and that a communication instability can include a disconnection.” Reply Br. 5. We agree with Appellants that the Examiner erred. Parent claim 1 recites an apparatus including “recording circuitry that records audio via the microphone responsive to detection of a communication instability, and wherein the communication instability comprises a power supply instability of the phone” (emphases added). Dependent claim 9 recites “the detection circuitry issues a notification responsive to detection of a communication instability that comprises a disconnection” (emphasis added). As claim 9 further narrows the scope of claim 1 by reciting another communication instability, we find claim 9 encompasses an apparatus responsive to both a power supply instability (i.e., by starting recording as recited in claim 1) and, additionally, a disconnection instability (i.e., by issuing a notification as recited in claim 9). Accordingly, we do not find claim 9 recites “words or phrases whose meaning is unclear,” and thus we do not sustain the Examiner’s 4 Appeal 2017-007541 Application 14/510,347 indefiniteness rejection. Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014)). II. 103 Rejection A. Independent Claim 1 Appellants argue the Examiner’s rejection of independent claim 1 is in error, because “[njeither Boland nor Kedem describe an allied device that is operatively coupled to a phone and that detects a communication instability that ‘comprises a power supply instability of the phone’” as required by the claim. App. Br. 9. Particularly, Appellants contend “Boland controls its own power usage” so that “the reduction in power usage has no nexus to recording audio,” and “Kedem does not provide evidence as to what would happen if the mobile telephone 100 loses power.” App. Br. 11, 12. Appellants’ arguments with respect to “a phone los[ing] power” are not commensurate with the scope of claim 1. App. Br. 14; see also Reply Br. 11. During prosecution, claims are given their broadest reasonable interpretation consistent with the Specification as they would be understood by one of ordinary skill in the art. In re Am. Acad, of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Claim 1 recites “the communication instability comprises a power supply instability of the phone.” Appellants’ Specification provides an example of a communication instability is “when a call gets dropped” (Spec. 121) but also that “a communication instability [is] indicative of signal loss, risk of loss, pending loss, etc.” (Spec. 123). Appellants’ Specification further provides that the “power level of a battery of a phone of a user may be germane to making decisions as to whether a 5 Appeal 2017-007541 Application 14/510,347 communication instability exists” (Spec. 1 66) so that “an allied device may commence recording of audio where a battery level is below a threshold level that may, for example, put a call at risk of being dropped” (Spec. 1 65). See also Spec, 63, 64, 75, and 77. Thus, one of ordinary skill in the art, consistent with the Specification, would understand the “communication instability comprises a power supply instability” of claim 1 as comprising a phone having a battery at a low power, which can engender a risk of a dropped call. See Fig. 6 (depicting the recording starts before the call is dropped). Further, Appellants’ arguments do not persuade us the Examiner erred in finding the combination of Boland and Kedem teaches or suggests the limitations of claim 1. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, Kedem, as correctly found by the Examiner, teaches or suggests a technique to improve communications apparatuses, by “recording audio responsive to detection of a communication instability of the phone,” and that the communication instability can be the onset of a dropped call for the phone itself or for the phone of the other party to the communication. Final Act. 4; see also Ans. 14; Kedem || 32—33. Kedem teaches or suggests “the onset of a dropped call is predicted” based on a weak signal which can be due to “unreliable battery connections.” Kedem || 3, 32—33. Appellants have not presented sufficient reasoning or evidence to persuade us the Examiner erred in finding one of ordinary skill would 6 Appeal 2017-007541 Application 14/510,347 improve the allied device of Boland in light of the conversation saving techniques of Kedem, in order to record a call responsive to a power supply instability of the phone, particularly given Boland’s concern with maintaining communications using batteries at low power. See Final Act. 4; Advisory Act. 5; Ans. 14; Boland ^fl[ 33, 54; see also Kedem || 3—5, 29 (describing benefits to recording audio in response to detecting a communication instability). Such improvement is no “more than the predictable use of prior art elements according to their established functions.” KSR, 550 at 401. Thus, we are not persuaded the Examiner erred in finding one of skill in the art would combine the teachings of Boland and Kedem in the manner claimed, to “increase[e] [the] apparatus functionality” of Boland’s apparatus comprising an allied device. Final Act. 4.2 We sustain the Examiner’s rejection of independent claim 1, and claims 2, 3, 9—11, 17, 22, 25—27, for which no additional substantive arguments are presented. See App. Br. 14— 15. B. Dependent Claims Dependent claim 21 depends from independent claim 1, and recites “wherein the allied device comprises a watch.” Appellants argue the Examiner erred in citing to Davis’s watch teachings in the rejection of claim 21, because “it is not more probable than not that one would replace the 2 Appellants additionally state they are “unsure if the Examiner is taking ‘Official Notice’ as to such ‘advantages,’ such [as] ‘increasing apparatus functionality[,]’ etc.” App. Br. 15. The Examiner, however, had previously stated that “Official Notice was not taken in the rejection and the cited references clearly show the claimed invention.” Advisory Act. 4. 7 Appeal 2017-007541 Application 14/510,347 first-person video recording headset 100 of Boland with a watch.” App. Br. 16. We agree with the Examiner however, that one of ordinary skill in the art would apply the communication improvement of Boland and Kedem to the watch of Davis, “because the apparatus could be coupled to different allied devices.” Ans. 15—16; Final Act. 6 (citing Davis Fig. 2A). Davis teaches that “FIG. 2A illustrates several examples of sensor enabled electronic devices 210” such as devices tethered to mobile phones, including “sensor enabled pedometers, electronic music players (e.g., MP3) 210-3, watches 210-4, glasses, and, on occasion, specialty mobile electronic devices.” Davis 132. We find modifying the prior art allied device to be a watch, as taught by Davis, is a simple substitution that yields predictable results. See KSR, 550 U.S. at 416. Accordingly, we sustain the Examiner’s rejection of dependent claim 21, and claim 24 not separately argued. See App. Br. 16; Ans. 15. Dependent claim 23 depends from independent claim 1, and recites “wherein the allied device comprises a part of a vehicle.” Appellants argue the Examiner erred in citing to Mitchell’s vehicle teachings in the rejection of claim 23, because “[t]he subject matter of [parent] claim 1 as to the allied device can respond to a power supply instability of the phone,” whereas “[b]oth Boland and Mitchell are concerned with power of what the Examiner considers to be an ‘allied’ device, specifically, the headset 100 in Boland and the vehicle in Mitchell (see, e.g., the vehicle based computing system 1 (VCS) and the vehicle 31 of Mitchell).” App. Br. 17—18. Appellants do not persuade us of error because, as discussed above with respect to claim 1, we find that the combination of Boland and Kedem teaches or suggests a power 8 Appeal 2017-007541 Application 14/510,347 supply instability of the phone, within the meaning of the claim. Thus, we sustain the Examiner’s rejection of dependent claim 23. See Final Act. 7—8; Mitchell 1 50. Dependent claim 28 depends from independent claim 10, and recites “the detecting comprises transmitting a request for information germane to a power level of the phone.” Appellants argue the Examiner erred in citing to Omoto’s request for power level teachings in the rejection of claim 28, because “in Omoto, the battery level is for purposes of file sharing as part of a shared process for sharing multiple files among terminals” and thus “Omoto lacks a nexus to a phone.” Appellants do not persuade us the Examiner’s combination, which relies on Boland in view of Kedem to teach the recited phone, is in error. See Ans. 16—17. We agree with the Examiner that one of skill in the art would use Omoto’s PDA battery information request teachings in the combination of Boland and Kedem. See Advisory Act 7; Final Act. 8; and Omoto H 31, 73; see also Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984) (“Neither is the practitioner in reading the [] patent disclosure compelled to adopt every single aspect of its teaching without the exercise of independent judgment.”). Accordingly, we sustain the Examiner’s rejection of dependent claim 28, and claim 29 not separately argued. See App. Br. 18—19. DECISION The Examiner’s decision rejecting claim 9 under 35 U.S.C. §112(b) is reversed. The Examiner’s decision rejecting claims 1—3, 9—11, 17, and 21—29 under 35 U.S.C. § 103 is affirmed. 9 Appeal 2017-007541 Application 14/510,347 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 10 Copy with citationCopy as parenthetical citation