Ex Parte Sagar

Board of Patent Appeals and Interferences

Aug 26, 2009

09966613 (B.P.A.I. Aug. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte RIK SAGAR 8
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10
Appeal 2008-004134 11
Application 09/966,613 12
Technology Center 3600 13
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Decided: August 26, 2009 16
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Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU 20
R. MOHANTY, Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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25
DECISION ON APPEAL 26
27
STATEMENT OF THE CASE28
Appeal 2008-004134
Application 09/966,613

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Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 1
of claims 1 to 25. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 2
Appellant invented an automatic booking system for guest 3
accommodations for reserving guest accommodations for the customer’s use 4
during a later period of time (Spec. 1). 5
The prior art relied upon by the Examiner in rejecting the claims on 6
appeal is: 7
Lee US 4,899,373 Feb. 6, 1990 8
Daum US 2003/0109938 A1 Jun. 12, 2003 9
Sunyich US 2003/0149576 A1 Aug. 7, 2003 10
The Appellant relies upon the following evidence: 11
Affidavit of Larry Liberchuk, filed under 37 C.F.R. § 1.131 with 12
accompanying exhibit, Abstract ID 700713. 13
Claim 1 under appeal reads as follows: 14
1. An automated booking system for guest 15
accommodations, comprising: 16
a guest accommodation which can be 17
automatically booked by the system and used by a 18
customer for a period of time; 19
a provider network of a guest 20
accommodations reservation provider having a 21
data base for customer preferences; 22
reserving means for communication between 23
a home network and the provider network for 24
reserving the guest accommodations for a period 25
of use; 26
preference transmission means for 27
transmitting customer preferences from a data base 28
of the home network to the data base of the 29
provider network; and 30
means for accessing the provider data base 31
for providing the accommodations depending on 32
the customer preferences. 33
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Application 09/966,613

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The Examiner rejected claims 1 to 8 under 35 U.S.C. § 102(e) 1
as being anticipated by Sunyich. 2
The Examiner rejected claims 9 and 10 under 35 U.S.C. § 103(a) as 3
being unpatentable over Sunyich. 4
The Examiner rejected claims 11 to 17 and 20 to 25 under 35 U.S.C. 5
§ 103(a) as being unpatentable over Sunyich in view of Daum. 6
The Examiner rejected claims 18 and 19 under 35 U.S.C. § 103(a) as 7
being unpatentable over Sunyich in view of Daum and Lee. 8
9
ISSUES 10
Has Appellant shown that the Examiner erred in determining that 11
Sunyich is prior art? 12
Has Appellant shown that the Examiner erred in finding that Sunyich 13
discloses transmitting customer preferences from a database of the home 14
network to the database of the provider network? 15
Has Appellant shown that the Examiner erred in rejecting claim 11 16
because neither Sunyich nor Daum discloses transmitting the user 17
programmable settings of the home appliance of the customer to the provider 18
user data base? 19
20
FINDINGS OF FACT 21
The Appellant has filed a Declaration under 37 C.F.R. § 1.131 22
executed by Larry Liberchuk, Senior IP Counsel for Philips Electronics N.A. 23
Corporation. The Declaration is dated July 20, 2006. The Declaration 24
states: 25
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The present Declaration is being submitted 1
under 37 CFR § 1.131 to establish a date of 2
invention of the subject matter of claims 1-25 as 3
now pending before the U.S. Patent and 4
Trademark Office. The present Declaration is 5
further being submitted to establish a date of 6
invention of the subject matter set forth in the 7
specification and drawings as originally filed 8
before the U.S. Patent and Trademark Office on 9
September 27, 2001. 10
Prior invention of the 09/966,613 patent 11
application is at least as of April 30, 1999, because 12
the inventor conceived of the present subject 13
matter at least as of that date. A copy of the 14
evidence supporting at least the above date is 15
enclosed herewith: the inventor submitted written 16
invention disclosure materials to the patent 17
department of Koninklijke Philips Electronics 18
N.V. with the intention of filing for patent 19
protection. This disclosure was followed by a due 20
diligence leading to a subsequent filing of the 21
application. 22
A paper entitled “Abstract ID 700713” was attached to the 23
Declaration. The paper indicates a short title “Service for Transfer Of User-24
Preferences From Home to Hotel,” and ID Date of April 30, 1999, Inventor 25
Rik Sagar and the company Philips Applied Technologies Sunnyvale. 26
Sunyich discloses an automated booking system for check-in and 27
electronically setting preferences to a hotel room [0002]. The preferences 28
include temperature control, audible alarms, access to connecting rooms, 29
refrigerators, etc. [0015]. The system may utilize a proximity card that is 30
automatically scanned when the guest enters the hotel. The preferences of 31
the guests are stored in a database on the card [0026]. 32
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Daum discloses a home network that transmits commands between a 1
source and appliances [0008]. 2
3
PRINCIPLES OF LAW 4
Section 1.131 5
37 C.F.R. § 1.131 provides in pertinent part: 6
(a) When any claim of an application or a 7
patent under reexamination is rejected, the 8
inventor of the subject matter of the rejected claim, 9
the owner of the patent under reexamination, or the 10
party qualified under §§ 1.42, 1.43, or 1.47, may 11
submit an appropriate oath or declaration to 12
establish invention of the subject matter of the 13
rejected claim prior to the effective date of the 14
reference or activity on which the rejection is 15
based …. 16
(b) The showing of facts shall be such, in 17
character and weight, as to establish reduction to 18
practice prior to the effective date of the reference, 19
or conception of the invention prior to the effective 20
date of the reference coupled with due diligence 21
from prior to said date to a subsequent reduction to 22
practice or to the filing of the application. Original 23
exhibits of drawings or records, or photocopies 24
thereof, must accompany and form part of the 25
affidavit or declaration or their absence must be 26
satisfactorily explained. 27
Conception 28
The test for conception is whether the inventor had an idea that was 29
definite and permanent enough that one skilled in the art could understand 30
the invention; the inventor must prove his conception by corroborating 31
evidence, preferably by showing a contemporaneous disclosure. An idea is 32
definite and permanent when the inventor has a specific, settled idea, a 33
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particular solution to the problem at hand, not just a general goal or research 1
plan he hopes to pursue. Burroughs Wellcome Co. v. Barr Labs., Inc., 40 2
F.3d 1223, 1227-28 (Fed. Cir. 1994). It is well settled that in establishing 3
conception a party must show possession of every feature recited in the 4
claim. Coleman v. Dimes, 754 F.2d 353, 359 (Fed. Cir. 1985). 5
6
Anticipation 7
A claim is anticipated only if each and every element as set forth in 8
the claim is found, either expressly or inherently described, in a single prior 9
art reference. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 10
(Fed. Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to whether a 11
reference anticipates a claim must focus on what subject matter is 12
encompassed by the claim and what subject matter is described by the 13
reference. As set forth by the court in Kalman v. Kimberly-Clark Corp., 713 14
F.2d 760, 772 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984), it is only 15
necessary for the claims to “‘read on’ something disclosed in the reference, 16
i.e., all limitations of the claim are found in the reference, or ‘fully met’ by 17
it.” While all elements of the claimed invention must appear in a single 18
reference, additional references may be used to interpret the anticipating 19
reference and to shed light on its meaning, particularly to those skilled in the 20
art at the relevant time. See Studiengesellschaft Kohle, m.b.H. v. Dart 21
Indus., Inc., 726 F.2d 724, 726-727 (Fed. Cir. 1984). 22
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Obviousness 1
An invention is not patentable under 35 U.S.C. § 103 if it is obvious. 2
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007). The facts 3
underlying an obviousness inquiry include: Under § 103, the scope and 4
content of the prior art are to be determined; differences between the prior 5
art and the claims at issue are to be ascertained; and the level of ordinary 6
skill in the pertinent art resolved. Against this background the obviousness 7
or nonobviousness of the subject matter is determined. Such secondary 8
considerations as commercial success, long felt but unsolved needs, failure 9
of others, etc., might be utilized to give light to the circumstances 10
surrounding the origin of the subject matter sought to be patented. Graham 11
v. John Deere Co., 383 U.S. 1, 17-18 (1966). In addressing the findings of 12
fact, “[t]he combination of familiar elements according to known methods is 13
likely to be obvious when it does no more than yield predictable results.” 14
KSR at 416. As explained in KSR: 15
If a person of ordinary skill can implement a 16
predictable variation, § 103 likely bars its 17
patentability. For the same reason, if a technique 18
has been used to improve one device, and a person 19
of ordinary skill in the art would recognize that it 20
would improve similar devices in the same way, 21
using the technique is obvious unless its actual 22
application is beyond his or her skill. Sakraida 23
and Anderson's-Black Rock are illustrative - a court 24
must ask whether the improvement is more than 25
the predictable use of prior art elements according 26
to their established functions. 27
KSR at 417. 28
A prior art reference is analyzed from the vantage point of all that it 29
teaches one of ordinary skill in the art. In re Lemelson, 397 F.2d 1006, 1009 30
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(CCPA 1968) (“The use of patents as references is not limited to what the 1
patentees describe as their own inventions or to the problems with which 2
they are concerned. They are part of the literature of the art, relevant for all 3
they contain.”). Furthermore, “[a] person of ordinary skill is also a person of 4
ordinary creativity, not an automaton.” KSR at 421. 5
On appeal, Applicants bear the burden of showing that the Examiner 6
has not established a legally sufficient basis for combining the teachings of 7
the prior art. Applicants may sustain their burden by showing that where the 8
Examiner relies on a combination of disclosures, the Examiner failed to 9
provide sufficient evidence to show that one having ordinary skill in the art 10
would have done what Applicants did. United States v. Adams, 383 U.S. 39, 11
52 (1966). 12
13
ANALYSIS 14
Sunyich as prior art 15
We do not agree with the Appellant that the Examiner erred in 16
determining that Sunyich is prior art. We agree with the Examiner that the 17
Declaration under 37 C.F.R. § 1.131 filed by Appellant is not sufficient to 18
remove Sunyich as prior art because the Declaration does not establish 19
conception of the invention. The Declaration states that the invention was 20
conceived at least as of April 30, 1999. However, the Declaration does not 21
address the limitations of the claims. Likewise, the evidence filed along 22
with the Declaration does not address the limitation of the claims. It is not 23
clear what features the “invention” referred to in the Declaration and 24
evidence includes. As such the Declaration and evidence does not establish 25
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possession of every feature recited in the claim. As Appellant has not 1
established conception, there is no necessity to address whether Appellant 2
used due diligence to reduce the invention to practice. 3
4
Anticipation 5
We are not persuaded of error on the part of the Examiner by the 6
Appellant’s argument that Sunyich does not disclose the step of transmitting 7
customer preferences from a data base of the home network to the data base 8
of the provider network. The Appellant directs our attention to the 9
embodiment in the Sunyich reference in which a user enters the preferences 10
into a kiosk at the hotel or directly into the hotel data base. However, the 11
Examiner relies on the embodiment in which a proximity card stores the 12
preferences of the user. We agree with the Examiner that the proximity 13
card, which the user carries, is a data base on a home network as broadly 14
claimed. 15
Therefore, we will sustain the Examiner’s rejection of claim 1 under 16
35 U.S.C. § 102(e) as being anticipated by Sunyich. We will also sustain 17
this rejection as it is directed to claims 2 to 8 as the Appellant has not argued 18
the separate patentability of these claims. In this regard, the statement in the 19
Brief that claims 2 to 7 are patentable for the separate patentable subject 20
matter recited is not considered an argument. We note that “[a] statement 21
which merely points out what a claim recites will not be considered an 22
argument for separate patentability of the claim.” 37 C.F.R. § 41.37 23
(c)(1)(vii) (2008). 24
25
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Obviousness 1
We will also sustain the Examiner’s rejection of claims 9 and 10 2
because the Appellant makes the same argument in regard to this rejection as 3
we found unpersuasive in regard to the rejection of claim 1. 4
As to claim 11, we are persuaded of error on the part of the Examiner 5
by Appellant’s argument that neither Sunyich nor Daum disclose 6
transmitting the user programmable settings of the home appliance of the 7
customer to the provider user data base. The Examiner has failed to show 8
where the prior art describes this limitation. While Daum does disclose a 9
home network with a source that controls the settings on appliances, Daum 10
does not disclose that the appliance settings are stored and then sent outside 11
the network. Likewise, while Sunyich discloses that a user can input user 12
settings into a hotel data base, there is no disclosure that the settings are 13
stored appliance settings. 14
Therefore, we will not sustain the Examiner’s rejection of claim 11 or 15
claims 12 to 24 dependent thereon. 16
We will sustain the rejection as it is directed to claim 25 because 17
claim 25 does not recite that the user settings of the home appliance are 18
transmitted to the provider data base. Rather, claim 25 recites that the user 19
preferences are transmitted from the home network to the provider network. 20
As we found above, Sunyich discloses this subject matter. 21
22
CONCLUSION OF LAW 23
On the record before us, Appellant has shown that the Examiner erred 24
in rejecting claims 11 to 24. The Appellant has not shown that the Examiner 25
erred in rejecting claims 1 to 10 and 25. 26
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DECISION 1
The Examiner's rejection of claims 1 to 10 and 25 is sustained. The 2
Examiner’s rejection of claims 11 to 24 is not sustained. 3
No time period for taking any subsequent action in connection with 4
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 5
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AFFIRMED-IN-PART 7
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PHILIPS INTELLECTUAL PROPERTY & STANDARDS 15
P.O. BOX 3001 16
BRIARCLIFF MANOR, NY 10510 17