Ex Parte Noecker et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201712538916 (P.T.A.B. Feb. 27, 2017) 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. 12/538,916 08/11/2009 Nicholas J. Noecker JR. AUS920090061US1 8272 75916 7590 IBM AUS IPLAW (GLF) c/o Garg Law Firm, PLLC 4521 Copper Mountain Lane Richardson, TX 75082 EXAMINER MAI, KEVIN S ART UNIT PAPER NUMBER 2456 NOTIFICATION DATE DELIVERY MODE 03/01/2017 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): dpandy a @ garglaw. com uspto@garglaw.com garglaw @gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICHOLAS J. NOECKER JR., JULIO E. RUANO, JAVIER R. TORRES, and PAUL S. WILLIAMSON Appeal 2016-007137 Application 12/538,916 Technology Center 2400 Before ERIC S. FRAHM, JOHN D. HAMANN, and MATTHEW J. McNEILL, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 8—22, which constitute all the claims pending this application. Claims 1—7 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejections under 35 U.S.C. § 112(a) and 35 U.S.C. § 103(a). Appeal 2016-007137 Application 12/538,916 Exemplary Claim Exemplary claim 8 under appeal, with emphases added to disputed portions of the claim, reads as follows: 8. A computer usable program product comprising a computer usable storage device including computer usable code for managing a local environment using data traffic information store computer memory, the computer usable code comprising: computer usable code for monitoring at a networking device, a data traffic on a data network associated with the local environment, the local environment comprising a set of devices, a device in the set of devices being controllable using the data network; computer usable code for computing, at the networking device, a first logical conclusion from a first pattern in the data traffic, the first pattern being a type of data that is generated ’ a user is present in the local environment and interacting with a system, the first logical conclusion being usable for selecting a first device from the set of devices, wherein the first logical conclusion is distinct from a second logical conclusion computed at the networking device from a second pattern in the data traffic, the second pattern being a pattern in historical data indicative of a pre-programmed task executing on the system without the user interaction with the system, and wherein the second logical conclusion is usable for selecting a second device from the set of devices; computer usable code for concluding, using the first logical conclusion and the second logical conclusion, that the user is present in the local environment; computer usable code for determining an action to cause a change in the local environment using the first device; computer usable code for determining a tovolosv of the local environment; computer usable code for using the topology to compute distances between a subset devices', 2 Appeal 2016-007137 Application 12/538,916 computer usable code for determining the user’s location relative to the subset of devices using the topology, computer usable code for estimating, based on the user’s location, a time period before the action', and computer usable code for sending a command corresponding to the action to a first device in the local environment such that the action is performed after the time period. The Examiner’s Rejections (1) The Examiner rejected claims 8—22 under 35 U.S.C. § 112(a) for failing to comply with the written description requirement. Final Act. 6. (2) The Examiner rejected claims 8—22 under 35 U.S.C. § 103(a) over the combination of Gilstrap (US 2011/0015797 Al; published Jan. 20, 2011 and filed July 14, 2009), Kouropoulos et al. (US 2006/0129863 Al; published June 15, 2006), and Alberth et al. (US 2008/0103686 Al; published May 1, 2008). Final Act. 7—28. (3) The Examiner rejected claims 8—22 under 35 U.S.C. § 103(a) over the combination of Gilstrap, Kouropoulos, and Ollis et al. (US 2008/0271123 Al; published Oct. 30, 2008). Final Act. 28. Principal Issues on Appeal Based on Appellants’ arguments in the Appeal Brief (App. Br. 10-21) and the Reply Brief (Reply Br. 2—8), as well as the Examiner’s findings, conclusions, and response to Appellants’ arguments (Final Act. 6—28; Ans. 2—11), the following principal issues are presented on appeal: (1) Did the Examiner err in rejecting claims 8—22 under 35 U.S.C. § 112(a), for failing to comply with the written description requirements? (2) Did the Examiner err in rejecting claims 8—22 as being obvious because (a) Alberth; and/or (b) Ollis, fails to teach or suggest “determining a 3 Appeal 2016-007137 Application 12/538,916 topology of the local environment” and then “using the topology,” as recited in independent claim 8, and as similarly recited in remaining independent claim 17? ANALYSIS We have reviewed the Examiner’s rejections (Final Act. 6—28) in light of Appellants’ arguments in the briefs (App. Br. 10—21; Reply Br. 2—8) that the Examiner has erred, as well as the Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 2—9). We agree with Appellants’ arguments and conclusions as to the (i) written description rejection; and (ii) both obviousness rejections. Rejection Under 35 U.S.C. § 1 12(a) The Examiner finds that paragraph 78 (describing turning on a projector at a suitable time) of the Specification fails to support the language found at the end of claims 8 and 17. However, Appellants contend (App. Br. 10-11; Reply Br. 2—3), and we agree, that paragraphs 64, 78, 81, and 82 provide written description support for the disputed subject matter of claims 8 and 17, namely that of sending a command to a device in a local environment “such that the action is performed after the time period.” The Examiner neither addresses nor disputes Appellants’ reliance upon paragraphs 64, 81, and 82 {see generally Ans. 2—3). First, there is no requirement that the disclosure contain “either examples or an actual reduction to practice;” rather, the critical inquiry is whether the patentee has provided a description that “in a definite way identifies the claimed invention” in sufficient detail that a person of ordinary skill would understand that the inventor was in possession of it at the time of 4 Appeal 2016-007137 Application 12/538,916 filing. AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010); KoitoMfg. Co. v. Tum-Key-Tech., LLC, 381 F.3d 1142, 1154 (Fed. Cir. 2004). That assessment “requires an objective inquiry into the four comers of the specification.” Ariad, 598 F.3d at 1351. Second, the following four portions of the Specification support the recited feature recited in independent claims 8 and 17 of sending a command to a device in a local environment “such that the action is performed after the time period:” (1) Paragraph 64 describes a location awareness component 510 that sends commands to a router 504 which is located on a third floor of a building and calculates a time period needed for the user (approximately six minutes) to park the car and ride the elevator from the lobby to the third floor. (2) Paragraph 78 describes a configuration 520 that sends instmctions for warming up a Xenon lamp of a projector to attain a desired temperature and luminescence, including controlling a preset lead-time. (3) Paragraph 81 describes a learning component 522 that is “configured to accumulate the time intervals between receipts of such information.” (4) Paragraph 82 describes a learning component 522 that “determines the average travel time from that end of the campus to local environment 502.” Thus, in light of the several different types of examples used to illustrate the various possible configurations 520 for the device 504 in local environment 502, location awareness component 520, and learning component 522, one of ordinary skill in the art would understand Appellants 5 Appeal 2016-007137 Application 12/538,916 disclose and claim sending commands to a device in a local environment “such that the action is performed after the time period.” The concept of sending commands to control actions to be performed either before or after a time period relating to a distance of a user to a device in the local environment is reasonably supported by the Specification. In light of our review of the originally filed Specification portions just highlighted above, we concur with Appellants’ contentions (App. Br. 10-11; Reply Br. 2—3) that claims 8 and 17 are adequately supported by the Specification as originally filed, and in particular by paragraphs 64, 78, 81, and 82. We find that paragraphs 64, 78, 81, and 82, taken with the remainder of the Specification as originally filed, convey with reasonable clarity to those skilled in the art that, as of the filing data sought, he or she was in possession of the invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991) (emphasis omitted.) Accordingly, we do not sustain the Examiner’s rejection of claims 8— 22 under 35 U.S.C. § 112(a). Rejections Under 35 U.S.C. § 103(a) Because we find that paragraphs 17, 21, and 23 of Alberth fails to teach or suggest “determining a topology of the local environment” and then “using the topology” as recited in claims 8 and 17, the Examiner has not established a prima facie case of obviousness over the combination of Gilstrap, Kouropoulos, and Alberth with respect to claims 8—22. Specifically, although Alberth uses global positioning to determine the location of a user, and even calculates a time of arrival to a local environment, Alberth is silent as to determining the location of a user or device in a topology of a local environment and then using that 6 Appeal 2016-007137 Application 12/538,916 determination to perform other actions. In other words, we agree with Appellants (App. Br. 16) that Alberth fails to determine a topology of a local environment as claimed. With regard to the obviousness rejection applying Ollis in Alberth’s place, we agree with Appellants (App. Br. 17—20) that the Examiner initially failed to present a prima facie case of obviousness. Turning to the Examiner’s response (Ans. 8—9) regarding this issue, we are in agreement with Appellants (Reply Br. 6—7) that this rejection is still deficient, at least because paragraphs 20 and 34 of Ollis simply concern global positioning information pertaining to the location of the user/device in relation to the local environment, and not the topology of the local environment or the location of the user/device within the local environment. And, to the extent paragraph 4 of Ollis may disclose a home automation system that locates a user’s position within a home, the Examiner has not articulated how or why this limited background teaching would be used in combination with the global positioning described in paragraphs 20 and 34. In other words, the Examiner’s explanation for this rejection found at pages 5 and 28 of the Final Rejection and pages 8—9 of the Answer does not formulate a prima facie case of obviousness as to the subject matter of claims 8—22. We are, therefore, constrained by the record to find the Examiner erred in rejecting independent claims 8 and 17, as well as claims 9-16 and 18—22 depending therefrom, as being obvious over the combinations of (i) Gilstrap, Kouropoulos, and Alberth, and (ii) Gilstrap, Kouropoulos, and Ollis. 7 Appeal 2016-007137 Application 12/538,916 CONCLUSIONS The Examiner erred in rejecting claims 8—22 (i) under U.S.C. § 112(a) for failing to comply with the written description requirement because paragraphs 64, 78, 81, and 82 of the Specification support the disputed subject matter; and (ii) under 35 U.S.C. § 103(a) as being obvious over the combination of (a) Gilstrap, Kouropoulos, and Alberth, and (b) Gilstrap, Kouropoulos, and Ollis, because neither Alberth nor Ollis teaches or suggests “determining a topology of the local environment” and then “using the topology,” as recited in independent claims 8 and 17. DECISION The Examiner’s written description and obviousness rejections are reversed. REVERSED 8 Copy with citationCopy as parenthetical citation