Ex Parte Selvarajan et al

Patent Trial and Appeal Board

Mar 25, 2016

12791126 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121791,126 06/01/2010
92556 7590
HONEYWELL/HUSCH
Patent Services
115 Tabor Road
P.O.Box 377
MORRIS PLAINS, NJ 07950
03/29/2016
FIRST NAMED INVENTOR
Shanmugam Selvarajan
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.
H0026237 4874/111062 2058
EXAMINER
CHOWDHURY, NIGAR
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
03/29/2016 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 SHANMUGAM SEL V ARAJAN,
MARINE DRIVE, MA YUR S. SALGAR, and
J. NARAYANAMURTHY SUBRAMANY A
Appeal2014-009054
Application 12/791,126
Technology Center 2400
Before KRISTEN L. DROESCH, KAMRAN JIV ANI, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-11 and 14--20. 1 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
providing a network video recording system;
1 Claim 13 is cancelled. App. Br. 14. The rejection of claim 12 is not
appealed. Id. at 2, 6.
Appeal2014-009054
Application 12/791,126
interfacing the network video recording system with a
separate end user operating system wherein the separate end user
operating system further comprises a user's everyday operating
system;
downloading programs, data, and/or files from the
network video recording system to the end user operating
system; and
using the downloaded programs, data, and/or files for
managing the network video recording system via the end user
operating system, wherein managing the network video
recording system includes specifying, via the end user operating
system, configuration details of elements of the network video
recording system and importing the configuration details from
the end user operating system to the network video recording
system.
PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smith et al.
Marchese
Anderson
Levy
us 5,822,542
US 6,891,566 B2
US 2008/0231716 Al
US 2009/0158318 Al
REJECTIONS
Oct. 13, 1998
May 10, 2005
Sept. 25, 2008
June 18, 2009
Claims 1-11 and 14--20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith, Marchese, and Anderson. Final Act. 6-19.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith, Marchese, Anderson, and Levy. Final Act. 20-21.
ANALYSIS
Appellants argue (i.) "there is no disclosure of interfacing a user's
everyday operating system to a network video recording system" in the
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Application 12/791,126
combination of Smith, Marchese, and Anderson set forth by the Examiner.
App. Br. 7. Appellants attempt to distinguish the claimed invention by
further arguing that (ii.) Smith, Marchese, and Anderson "are all directed to
network video recording systems." Id. at 9. Lastly, Appellants argue (iii.)
"none of the cited references are directed to the problem solved by the
claimed invention ... that of controlling a network video recording system
using a simple system based upon a user's everyday operating system" and
"[ s ]ince the problem is not recognized, there would be no reason to combine
the references." Id. at 9-10; see also id. at 7 ("[T]here is no disclosure of
any reason to combine Smith, Marchese, and Anderson.").
With regard to argument (i. ), the Examiner finds Smith teaches an
intelligent video information management system in which mouse-actuatable
screen displays are supported by a constituent Video Recording/Personal
Computer (VR/PC) unit. Ans. 7. The Examiner further finds Marchese
teaches a client computer 22 running a Windows TM operating system as part
of a networked digital video system. Id. at 8 citing Marchese at Fig. 1, col.
5, 11. 21--42, col. 8, 11. 53---60. Appellants do not address the Examiner's
specific findings. Appellants also do not provide an alternative construction
for the claim terms "interfacing" or "user's everyday operating system," nor
do Appellants explain how the Examiner's interpretation is overbroad,
unreasonable, or inconsistent with the Specification. Moreover, Appellants'
first argument is unsupported by evidence, and therefore constitutes attorney
argument which is not persuasive to rebut the Examiner's findings. For
these reasons, we are not persuaded by argument (i.).
With regard to argument (ii.), to the extent Appellants argue the
applied references are non-analogous art, our reviewing court has set forth a
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Application 12/791,126
two-prong test for determining whether a prior art reference is analogous:
whether the reference is from the same field of endeavor as the claimed
invention, and if the reference is not within the same field of endeavor,
whether the reference is reasonably pertinent to the particular problem with
which the inventor is involved. In re Klein, 647 F.3d 1343 (Fed. Cir. 2011).
Claim 1 recites "providing a network video recording system." Appellants'
admission that Smith, Marchese, and Anderson "are all directed to network
video recording systems" supports finding that the references are in the same
field of endeavor, and are reasonably pertinent to the particular problem with
which the inventor is involved. See App. Br. 9. Thus, argument (ii.) does
not persuade us Smith, Marchese, and Anderson constitute non-analogous
prior art. See Klein, 647 F.3d at 1343.
Contrary to argument (iii.), and even assuming, arguendo, that each of
Smith, Marchese, and Anderson teach controlling a network video recording
system for a different purpose or to address a different problem from that of
Appellants' claimed invention, such argument is not persuasive to show
nonobviousness. See e.g., In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972)
(noting "[t]he fact that appellant uses [a chemical] for a different purpose
does not alter the conclusion that its use in a prior art composition [would
have been] prima facie obvious from the purpose disclosed in the
references"); see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007) ("[N]either the particular motivation nor the avowed purpose of the
[Appellants] controls" in an obviousness analysis.).
Moreover, the Court rejected the requirement for an explicit teaching,
suggestion, or motivation to combine known elements in order to show
obviousness. KSR, 550 U.S. at 415. "'[R]ejections on obviousness cannot be
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Application 12/791,126
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.'" Id. at 418. As reasoning for combining the
references, the Examiner concludes it would have been obvious to one of
ordinary skill in the art to incorporate the teachings of Marchese and
Anderson into Smith's system
because said incorporation improves the user friendliness of the
combined system by allowing the user to download and manage
programs, data, and/or files to the separate end user system ...
[and] because said incorporation allows an authorized user to
use network video recording system that improves the user
accessibility of the combined system.
Final Act. 5---6, 9-10; Ans. 21-22. Argument (iii.) neither addresses the
legal conclusion of obviousness, nor persuades us of an insufficiency or lack
of rational underpinning for the Examiner's combination of the teachings of
Smith, Marchese, and Anderson.
Appellants also present arguments regarding the "separate user
operating system" and the cited teachings of Marchese. Reply Br. 2, 4--5.
To the extent new or supplemental arguments are presented in the Reply
Brief, such arguments are waived as untimely if "good cause" has not been
demonstrated for the belated presentation. See 37 C.F.R. § 41.41(b)(2)
(2012). The waiver is applicable here because these arguments are first
presented in the Reply Brief and good cause was not shown as to why these
arguments could not have been raised in the Appeal Brief. For example,
neither argument is responsive to a shift in the Examiner's articulated
position. Compare Final Act. 2 with Ans. 18; compare Final Act. 8-9 with
Ans. 20-21.
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For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Smith, Marchese, and Anderson teaches or
suggests the limitations recited in claims 1, 1 7, and 19, as well as the
limitations recited in claims 2-11, 14--16, 18, and 20, which are not
separately argued. Therefore, we sustain the 35 U.S.C. § 103(a) rejection of
claims 1-11 and 14--20.
In addition, Appellants acknowledge but do not argue the rejection of
claim 12. App. Br. 2, 6. We find nothing in the record indicating that claim
12 has been cancelled. Therefore, we summarily sustain the Examiner's
rejection of claim 12. See 37 C.F.R. § 41.31(c) (2012).
DECISION
We affirm the rejection of claims 1-11 and 14--20 under
35 U.S.C. § 103(a) as being unpatentable over Smith, Marchese, and
Anderson.
We affirm the rejection of claim 12 under
35 U.S.C. § 103(a) as being unpatentable over Smith, Marchese, Anderson,
and Levy.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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