Ex Parte Ramachandran et alDownload PDFPatent Trial and Appeal BoardSep 9, 201613368843 (P.T.A.B. Sep. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/368,843 02/08/2012 92556 7590 HONEYWELL/HUSCH Patent Services 115 Tabor Road P.O.Box 377 MORRIS PLAINS, NJ 07950 09/13/2016 FIRST NAMED INVENTOR Gayathri C. Ramachandran 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. H0033219 4874/114853 4018 EXAMINER VELEZ-LOPEZ, MARIO M ART UNIT PAPER NUMBER 2144 NOTIFICATION DATE DELIVERY MODE 09/13/2016 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): patentservices-us@honeywell.com amy.hammer@huschblackwell.com pto-chi@huschblackwell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GAY ATHRI C. RAMACHANDRAN, SIV AKUMAR BALAKRISHNAN, and MUTHUVEL RAMALINGAMOORTHY Appeal2015-003785 Application 13/368,843 Technology Center 2100 Before ALLEN R. MacDONALD, JON M. JURGOV AN, and KEVIN C. TROCK, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-003785 Application 13/368,843 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1, 2, and 5-20. Non-Final Act. 1. Claims 3 and 4 are cancelled. App. Br. 16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Exemplary claim 1 under appeal reads as follows (bracketing added): 1. A method comprising: [(A)] transmitting a blank vCard to a visitor's mobile device; [(B)] the visitor's mobile device automatically transmitting a completed vCard to a central registration station of a building upon entry of the visitor into a lobby or front office of the building and; [(C)] the central registration station receiving the completed vCard from the visitor's mobile device via a wireless communication medium; [(D)] the central registration station extracting at least one piece of data from the received completed vCard; [(E)] the central registration station populating respective fields of a registration form with the extracted at least one piece of data; [ (F)] a viewing screen of the central registration station displaying the populated registration form; and [(G)] based on the populated registration form, the central registration station determining whether to register a visitor associated with the received completed vCard. 2 Appeal2015-003785 Application 13/368,843 Rejections The Examiner rejected claims 1, 2, 5, 6, 9, 19, and 20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Mooney et al. (US 2007/0013610 Al; Jan. 18, 2007), INTERNET MAIL CONSORTIUM, http://web.archive.org/web/201007041721OO/http://www.imc.org/pdi/ vcardoverview.html (hereinafter "IMC"), Anders Kristensen, Formsheets and the XML forms language, 31 COMPUTER NETWORKS 1189, 1189-1201 (1999) (hereinafter "Kristensen"), and KINTRONICS INFORMATION TECHNOLOGY, http:/!web.archive.org/web/20111205230042/ http://www.kintronics.com/ easylobby.html (hereinafter "kintronics"). 1 The Examiner rejected claims 13-15, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Mooney, Kristensen, and IMC.2 The Examiner rejected claims 7, 8, 10-12, and 16 under 35 U.S.C. § 103(a) as being unpatentable over various combinations of Mooney, Kristensen, IMC, and other references. 3 1 Separate patentability is not argued for claims 2, 5, 6, 9, 19, and 20. Except for our ultimate decision, these claims are not discussed further herein. 2 Separate patentability is not argued for claims 14, 15, 17, and 18. Except for our ultimate decision, these claims are not discussed further herein. 3 Separate patentability is not argued for claims 7, 8, 10-12, and 16. Thus, the rejections of these claims turns on our decisions as to claim 1. Except for our ultimate decision, these claims are not discussed further herein. 3 Appeal2015-003785 Application 13/368,843 Appellants' Contentions 1. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: [Claim 1 is] clearly differentiated over Mooney et al., IMC, Kristensen and Kintronics. For example, Mooney et al. is merely directed to the recognition of authorized persons and to the presentation of an electronic badge. IMC is directed to the electronic use of existing vCards, Kristensen to XML forms language and Kintronics to scanning drivers licenses or the like in order to generate badges. App. Br. 7-8. Mooney et al. does not address any methods for handling visitors. Similarly, IMC is directed to the dissemination of electronic business cards provided as vCards. App. Br. 8. Kristensen 1s directed to supplying "information prompted for by many Web sites as part of a registration process" (Kristensen, page 1196). However, web site access is not relevant to secured areas. Kintronics is directed to a system for visitor registration and management. Kintronics relies upon a "license scanner" that operates "automatically capture visitor data from a license, passport or business card." However, Kintronics requires a visitor to scan his/her license. Moreover, Kintronics represents a complete solution in and of itself to a visitor registration problem. App. Br. 9. 2. Appellants also contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Since IMC is directed to personal vCards, IMC teaches away from the claimed invention. IMC teaches away from the claimed invention because it discourages the use of a vCard as a 4 Appeal2015-003785 Application 13/368,843 universal carrier for use with multiple people for gaining access into secured areas. App. Br. 8-9 (emphasis added). In addition, "it is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art" (In re Wesslau, 353 F.2d, 241 (CCPA 1965)). In each case, IMC, Smashing, Kristensen and Mooney teach away from the claimed invention or are simply not relevant. App. Br. 9 (emphasis added). 3. Appellants also contend that the Examiner erred in rejecting claim 13 under 35 U.S.C. § 103(a) because: Claim[ 13 is] clearly differentiated over Mooney et al., Kristensen and IMC. For example, Mooney et al. is merely directed to wireless security badges, Kristensen to XML forms language and Smashing to the interaction of persons and websites through the Internet and IMC to the distribution of pre-existing electronic business cards. None of the cited references disclose "the mobile device automatically transmitting a completed vCard to a central registration station of a building via a wireless communication medium upon entry of the visitor into a lobby or front office of a building and [sic]; and based on the transmitted completed vCard, the mobile device receiving a registration image from the central registration station." Accordingly, Mooney et al., Kristensen and IMC and the combination of Mooney et al., Kristensen and IMC fails to teach or suggest each and every limitation of the claimed invention. App. Br. 10 (emphasis added). 5 Appeal2015-003785 Application 13/368,843 4. Appellants contend that the Examiner erred in rejecting claims 1 and 13 under 35 U.S.C. § 103(a) because: In general, a prima facie case of obviousness has not been established. In this regard, the Federal Circuit has continually held that the Examiner has the burden under 3 5 U.S.C. §103 of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992); In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988). This burden may be satisfied only by showing that some objective teaching in the prior art or knowledge generally available to one of ordinary skill in the art would lead that individual to the claimed invention. For example, as the Federal Circuit has held recently, as well as on numerous other occasions: "[t]here must be some reason, suggestion or motivation found in the prior art whereby a person of ordinary skill in the field of the invention would make the combination." In re Oetiker, supra, 24 USPQ2d at 1446. Moreover, the mere fact that the prior art references could be modified in the manner proposed by the Examiner would not have made the modification obvious unless there is some motivation or suggestion in the prior art to do so. In re Gordon, 773 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984), also see In re Fritch, 972 F.2d 1260, 23 USPQ2d 1781, 1783 (Fed. Cir. 1992) (The mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification). When making an assessment of the obviousness of the claimed invention, the prior art, viewed as a whole, must "suggest the desirability, and thus the obviousness, of making the combination." In re Beattie, 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992), .... App. Br. 10-11, emphasis added. 6 Appeal2015-003785 Application 13/368,843 5. Appellants also contend that the Examiner erred in rejecting claims 1 and 13 under 35 U.S.C. § 103(a) because: Mooney et al., IMC, Kristensen and Kintronics and the combination does not recognize the problem solved by the claimed invention. In this regard, the problem solved is that of automatically generating access credentials for visitors to a secured area. Since this concept is not recognized, there would be no reason to combine the cited references. App. Br. 13, emphasis added. Issues on Appeal Did the Examiner err in rejecting claims 1 and 13 as being obvious because these claims differentiate over the references? Did the Examiner err in rejecting claims 1 and 13 as being obvious because a prima facie case of obviousness has not been established? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We disagree with Appellants' conclusions. As to Appellants' above contention 1, the essence of Appellants' argument is that the references do not qualify as prior art under § 103 because they are not analogous to the claimed invention. We disagree. Contrary to Appellants' argument, we find that each of the references is analogous art. "Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is 7 Appeal2015-003785 Application 13/368,843 reasonably pertinent to the particular problem with which the inventor is involved." In re Bigio, 381 F.3d 1320, 1325 (Fed.Cir.2004). "A reference is reasonably pertinent if ... it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem." [In re Clay, 966 F.2d 656, 659 (Fed.Cir.1992).] "If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection." Id. Whether a prior art reference is "analogous" is a question of fact. Id. at 658. Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011 ). Appellants over focus on the particular end use (quoting nearly the entire claim 1 at page 8, lines 1-10, of the Appeal Brief) of their invention and overlook their own Specification's discussion of the invention. The present invention relates generally to visitor management systems. More particularly, the present invention relates to wireless systems and methods for electronic visitor registration. Spec. ,-r 1. Systems and methods of electronic visitor registration are provided. Methods include receiving visitor information via a wireless communication medium, extracting at least one piece of data from the received visitor information, populating respective fields of a registration form with the extracted at least one piece of data, and based on the populated registration form, determining whether to register a visitor associated with the received visitor information. Abstract. In many large buildings and facilities, for example, corporate or manufacturing facilities, security is important. Thus, many large buildings employ visitor management systems to handle a guest's check in and check out process, for example, registering a guest of the building. 8 Appeal2015-003785 Application 13/368,843 In known visitor management systems, when a guest or visitor arrives at a building, he must check in with security to register. Because physical presence and verification is required, a guest must present identification. Known systems and methods of visitor registration manually scan a guest's identification card, for example, a driver's license and/or business card. Spec. i-fi-1 2-3. When the registration process is complete, security of a building often issues a physical temporary access badge to the guest for use in traversing the building. Spec. i15. Based on this discussion, we find that Appellants' field of endeavor is visitor management systems including access control and visitor registration (i.e., collection of personal information). That Mooney is within this field of endeavor is shown by the building access control described at paragraph 4 thereof, which is reasonably pertinent to the particular problem with which the inventor is involved. IMC is also reasonably pertinent to the particular problem as it teaches the collection of personal information as cited by the Examiner. Kristensen is similarly directed to the collection of personal information at pages 1196-1197. Kintronics is also reasonably pertinent to the particular problem as its title teaches it is directed to a visitor registration and management system. As to Appellants' above contention 2, we disagree. Appellants assert that each reference teaches away from the claimed invention. App. Br. 8-9. As the United States Court of Appeals for the Federal Circuit has counseled: A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. . . . [I]n general, a reference will teach 9 Appeal2015-003785 Application 13/368,843 away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants have not attempted to persuade us that as to any argued limitation, that any of the references suggest that the line of development flowing from the references' disclosure is unlikely to be productive of the result sought by the Appellants. Rather, as support for the "teaches away," Appellants have merely state what each reference discloses. App. Br. 8-9. At most, Appellants have simply argued that each reference does not teach one or more argued limitation. Even if we agree, that is not sufficient to "teach away" from using the limitation. As to Appellants' above contention 3, we disagree. Appellants merely recite the language of particular claim 13 and assert the cited prior art reference does not teach or suggest the claim limitations. Without more, this fails to constitute an argument on the merits. See 37 C.F.R. § 41.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). As to Appellants' above contention 4, we disagree. Appellants cite to the Oetiker, Gordon, Beattie, and other decisions by the Court of Appeals without acknowledging that these holdings were modified by the Supreme Court's holding in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007). Appellants' argument fails because it does not take into account the impact of the Court's KSR decision. The Court repudiated strict application of the "teaching, suggestion, or motivation" test to show obviousness. KSR, 550 U.S. at 415 ("We begin by rejecting the rigid approach of the Court of Appeals."). Rather, the requirement is only that the Examiner show "the subject matter as a whole would have been obvious at the time the invention 10 Appeal2015-003785 Application 13/368,843 was made to a person having ordinary skill in the art to which said subject matter pertains." KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis added); id. at 418 ("[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."). We conclude that the Examiner articulates just such a showing in the rejection from which this appeal is taken. Non-Final Act. 2-5, 11-13. Additionally, Appellants have not presented evidence sufficient to show that combining the prior art was "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citingKSR, 550 U.S. at 418-19). As to Appellants' above contention 5, we disagree. Appellants' argument, that the rejection fails because "the combination [of references] does not recognize the problem solved by the claimed invention" (App. Br. 13), is at odds with the Court's explicit guidance in KSR: The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve. 119 Fed.Appx., at 288. The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent's subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. 11 Appeal2015-003785 Application 13/368,843 KSR, 550 U.S. at 420. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1, 2, and 5-20 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 1, 2, and 5-20 are not patentable. DECISION The Examiner's rejections of claims 1, 2, and 5-20 are affirmed. 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 12 Copy with citationCopy as parenthetical citation