Ex Parte Smith

Patent Trial and Appeal Board

Sep 25, 2017

13342387 (P.T.A.B. Sep. 25, 2017)

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.
13/342,387 01/03/2012 Richard Alan Smith H0031768-HON10513P00630US 9429
93730 7590 09/27/2017
HONEYWELL/WOOD PHILLIPS
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
FOXX, CHICO A
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
ksanderson@woodphillips.com
patentservices-us @ honey well, com
docketing @ woodphillips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD ALAN SMITH
Appeal 2017-004370
Application 13/342,387
Technology Center 2600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CATHERINE SHIANG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—18, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-004370
Application 13/342,387
Invention
The disclosed and claimed invention on appeal is directed to “audio
detectors and, more particularly, to a method and system for audio detector
mode activation.” (Spec. 14).
Representative Claim
1. A method of automatically activating a select mode
of an acoustic detector comprising:
selectively activating a remote device to generate an
acoustic test signal, the acoustic test signal comprising a test
sound with an encoded pattern indicative of the select mode;
the acoustic detector receiving an acoustic signal, the
acoustic signal comprising one of an ambient sound representing
an alarm condition, an ambient sound not representing an alarm
condition, being a false alarm, or the test sound;
converting the received acoustic signal to a digital signal
and analyzing the digital signal to determine content of the
signal;
categorizing the received acoustic signal based on analysis
of the digital signal as an alarm condition, as a false alarm, or as
a test signal if the encoded pattern is present; and
selectively adjusting the operation of the acoustic detector
based upon the received acoustic signal if the signal is
categorized as a test signal.
(Contested limitation emphasized).
Rejection
Claims 1—18 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Smith et al. (US
2009/0040869 Al; publ. Feb. 12, 2009 (hereafter referred to as “Smith,” on
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Application 13/342,387
the record which in 121 incorporates Rickman (US 5,341,122; iss. Aug. 23,
1994) by reference) in view of Piel et al. (US 2008/0310254 Al; publ. Dec.
18, 2008) (hereafter referred to as “Piel”).
Grouping of Claims
Based upon Appellant’s arguments, we decide the appeal of claims 1,
2, and 7—10 on the basis of representative independent claim 1. See 37
C.F.R. § 41.37(c)(l)(iv). Applying the same procedural rule {id.), we decide
the appeal of all claims 11, 12, 17, and 18 on the basis of representative
independent claim 11; we decide the appeal of dependent claims 3—6 on the
basis of representative claim 3; and we decide the appeal of dependent
claims 13—16 on the basis of representative claim 13.
To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We disagree with Appellant’s arguments, and we adopt as our
own: (1) the findings and legal conclusions set forth by the Examiner in the
Final Office Action from which this appeal is taken (Final Act. 2—18), and
(2) the findings, legal conclusions, and explanations set forth in the Answer
in response to Appellant’s arguments (Ans. 2—6). We highlight and address
specific findings and arguments for emphasis in our analysis below.
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Application 13/342,387
Rejection of Independent Claim 1 under 35 U.S.C. § 103(a)
Issue
Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by finding
the cited combination of Smith and Piel would have taught or suggested the
contested step or act of: “converting the received acoustic signal to a digital
signal and analyzing the digital signal to determine content of the signal,”
before the recited step of categorizing the received acoustic signal, within
the meaning of representative claim l?1 (Emphasis added).
Independent Claim 1
At the outset, we first address Appellant’s repeated contentions “the
Office action simply parrots the wording of an earlier action to formulate a
rejection ignoring the express limitations now present in claim 1.” (App. Br.
4).
We note there is no requirement the Examiner must reproduce the
literal claim language in the statement of rejection. Our reviewing court
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). See, e.g., Spec. 140:
It will be appreciated by those skilled in the art that there
are many possible modifications to be made to the specific forms
of the features and components of the disclosed embodiments
while keeping within the spirit of the concepts disclosed herein.
Accordingly, no limitations to the specific forms of the
embodiments disclosed herein should be read into the claims
unless expressly recited in the claims.
(Emphasis added).
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Application 13/342,387
guides “the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007). In particular:
[A]ll that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132. As the statute itself instructs,
the examiner must “notify the applicant,” “stating the reasons for
such rejection,” “together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application.”
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
This burden is met by “adequately explaining] the shortcomings it
perceives so that the applicant is properly notified and able to respond.”
Hyatt, 492 F.3d at 1370. It is only “when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter the
grounds for rejection” that the prima facie burden has not been met and the
rejection violates the minimal requirements of 35 U.S.C. § 132(a). Chester
v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
Here, we do not find the Examiner’s rejection violates the minimal
notice requirements of 35 U.S.C. § 132(a). After reviewing the record, we
understand the Examiner’s mapping of the contested limitations to the
corresponding feature(s) in the cited references. Therefore, we find the
Examiner has satisfied the requisite burden of production by explaining the
deficiencies of the claimed invention with respect to the cited prior art such
that the Appellant was “properly notified and able to respond.” Hyatt, 492
F.3d at 1370. Thus, we find the Examiner has satisfied the notice
requirement under 35 U.S.C. § 132(a) to establish a prima facie case.
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Regarding the contested limitation and the claimed sequence of steps,
in method claim 1, Appellant contends, inter alia:
Claim 1 as now presented specifies “converting the
received acoustic signal to a digital signal and analyzing the
digital signal to determine content of the signal.” Unlike the
method defined by claim 1, Smith does not categorize an
acoustic signal based on analysis of a digital signal. Instead,
Smith uses a separate test mode activation step. Nor does Smith
analyze the signal prior to the determination.
(App. Br. 3) (emphasis added).
The Examiner finds: “Smith fail[s] to disclose converting the acoustic
signal into a digital signal representation and performing analysis on the
digital signal representation prior to the claimed categorizing . . . .” (Ans.
3) (emphasis added).
Although Smith flflf 45—47) does not teach the argued order of
claimed steps (i.e., “categorizing” after the A/D converting and analyzing
step), the Examiner looks to the secondary Piel reference for teaching or
suggesting:
decoding of the encoded acoustic signals involves converting
analog signals to digital signals to determine if a glass break
alarm is qualified, i.e. determining by a microcontroller 7 4
(equivalent to control section 310 of Piel) via analysis of the
acoustic signal's converted digital signal: content of the
received acoustic signal, hence the combination of Smith in
view of Piel renders obvious the arrival of the claimed
invention, since the received encoded acoustic signal of Smith
can be provided to a decoder system as taught by Piel for
conversion of the acoustic signal into a digital signal for analysis
to determine the content of the received acoustic signal being
performed at step 310 of Fig. 2. .. .
(Ans. 3^4) (emphasis added).
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As noted by Appellant in the Appeal Brief (7), “Piel then references
Rickman Patent No. 5,524,099 as an example of the encoded signal. The
encoded signal therein is illustrated as a pulse signal.” See Piel 128: “For
example, the encoded acoustic signal can be the acoustic signal described by
U.S. Pat. No. 5,524,099, issued to Stephen Rickman, which is hereby
incorporated by reference.”
The Examiner cites to Rickman ‘099 in the Answer (3), as teaching
(at col. 5,11. 35—46) the converting of analog acoustic signals into digital
signals. See Rickman ‘099, in pertinent part, which describes:
the microcontroller executes two tasks simultaneously. First, it
begins converting analog inputs from circuit block 75 to digital
signals and processing them to determine if a glass break alarm
is qualified. Secondly, it starts an internal timer to count out the
12.5 millisecond "don't care", segment of the first interpulse
duration.
(Rickman ’099, col. 5,11. 42^47) (emphasis added).
After reviewing the record, we find a preponderance of the evidence
supports the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness. (Final Act. 2—6; Ans. 2-4). We find modifying
Smith’s sequence of first performing categorizing and then converting
(A/D), with the teachings of Piel (incorporating by reference Rickman ‘099
in paragraph 28) would have merely realized a predictable result. See KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Moreover, “the question
under 35 [U.S.C.] § 103 is not merely what the references expressly teach
but what they would have suggested to one of ordinary skill in the art at the
time the invention was made.” Merck & Co. v. Biocraft Laboratories, Inc.,
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Application 13/342,387
874 F.2d 804, 807 (Fed. Cir. 1989), cert, denied, 493 U.S. 975 (1989); see
also MPEP § 2123. (Emphasis added).2
Accordingly, we sustain the Examiner’s rejection under § 103(a) of
representative claim 1. The remaining associated grouped claims fall with
representative claim 1. See Grouping of Claims, supra.
Independent Claim 11
Regarding the Examiner’s rejection of independent claim 11,
Appellant contends, inter alia: “Smith does not disclose or suggest that a
controller converts an acoustic signal to a digital signal and determines
content and categorizes the digital signal, as set forth in claim 11... Piel
does not disclose the admitted deficiencies of Smith.”
We disagree, for essentially the same reasons discussed above
regarding claim 1, and as further articulated by the Examiner (Final Act 10;
Ans. 5—6). In the Answer (5), the Examiner clarifies that “the controller
limitation was [read on] Piel[’s] control section 310 of Fig. 1 which would
perform the claimed functional step[s]. . . .”
2 Regarding the conditional “categorizing” and “selectively adjusting” steps
of method claim 1, we note that conditional steps employed in a method
claim need not be found in the prior art if, under the broadest reasonable
interpretation, the method need not invoke those steps. See Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792, at *4 (PTAB April 28,
2016) (precedential) (holding “[t]he Examiner did not need to present
evidence of the obviousness of the remaining method steps of claim 1 that
are not required to be performed under a broadest reasonable interpretation
of the claim . . .”); see also Ex parte Katz, No. 2010-006083, 2011 WL
514314, at *A-5 (BPAI Jan. 27, 2011).
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Further, to the extent Appellant attempts to distinguish apparatus
claim 11 over the cited prior art in terms of recited functional or temporal
limitations, instead of structure, we find such arguments unavailing.
Regarding apparatus claims generally, our reviewing court guides the
patentability of an apparatus claim “depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Marketing Int 7, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “It is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable.” In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (citations omitted). See also Paragon Solutions,
LLCv. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir. 2009). “[Apparatus
claims cover what a device is, not what a device does.'” Hewlett-Packard
Co. v. Bausch &Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
(emphasis added).3
This reasoning is applicable here. Although we have reviewed
Appellant’s arguments in the Reply Brief, on this record, we are not
persuaded the Examiner erred. Therefore, we sustain the Examiner’s
rejection under § 103(a) of representative claim 11. The remaining
associated grouped claims fall with representative claim 11. See Grouping
of Claims, supra.
Representative Dependent Claims 3 and 13
Claim 3 recites: “A method of automatically activating a select mode
of an acoustic detector of claim 1 wherein the acoustic signal includes
silent times selectively inserted in the test sound” (emphasis added).
3 See also Manual of Patent Examining Procedure § 2111.04 (9th Ed.,
Rev. 07.2015, Nov. 2015) regarding “wherein” clauses generally.
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Claim 13 recites commensurate contested language: “The acoustic
detector of claim 11 wherein the acoustic signal includes silent times
selectively inserted in the test sound” (emphasis added).
Regarding the rejection of claim 3, Appellant contends:
The deficiencies with respect to the references and claim
1 are noted above. Claims 3-6 recite that the acoustic signal
includes silent time selectively inserted in the test sound. This
is illustrated in Fig. 5 of the application. There is no disclosure
or suggestion of the same in Smith. The action references Piel at
[0028] for disclosing a “the technique of inserted space (silent
time) between pulses of different acoustic signals to represent
unique and coded pattern . . . [.]" This mischaracterizes what is
taught in Piel. In fact, Piel states:
“In a preferred embodiment, different acoustic
signals will have different patterns defined by
different space or timing between elements. Each
pattern corresponds to a different control instruction
or function.”
Piel then references Rickman Patent No. 5,524,099 as an
example of the encoded signal. The encoded signal therein is
illustrated as a pulse signal. Thus, the signal referenced in Piel
is no different from the signal referenced in Smith at [0024],
Thus Piel adds nothing to Smith in this regard. The timing or
related information in an encoded signal is based on the presence
or absence of pulses. The time between pulses are not silent
times. The fact that the prior art reference discloses the use of a
pre-defmed encoded signal in no way discloses or suggests
incorporating silent times in a test sound signal. Thus, claim 3
and its dependent claims 4-6 are not obvious for this reason as
well.
(App. Br. 6—7) (emphasis added).
The Examiner disagrees, and cites the incorporation by reference of
Piel (128) to U.S. Patent 5,524,099 to Rickman:
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see Piel |0028 which discloses that the remote control device
includes an acoustic generating section 210 and memory 215 to
generate a predefined acoustic signal by using different spacing
and timing between elements, i.e. acoustic sound element. |0028
discloses the incorporation of U.S. Pat. No. 5524099 which at
Fig. 2; Col. 3, lines 23-28 discloses the use of spaced apart
acoustic pulses, i.e. sound events, in which Fig. 2 shows that the
spaces have time periods that have no sound elements, hence
acoustic signal comprises silent times used to encode the acoustic
signal.
(Ans. 4).
We decline to read the argued limitations from Appellant’s Figure 5
into the claims (App. Br. 6).4 Claim 3 and 13 merely require “the acoustic
signal includes silent times selectively inserted in the test sound”
(emphasis added).
After reviewing the record, we find at least Figure 2 of the
incorporated Rickman ‘099 patent teaches or at least suggests the contested
“silent times,” within the meaning of a broad but reasonable interpretation of
representative dependent claims 3 and 13, as found by the Examiner. (Ans.
4). See Merck, 874 F.2d at 807—808. On this record, we are not persuaded
the Examiner’s broader claim interpretation is overly broad, or
unreasonable. 5
4 Our reviewing “court has repeatedly ‘cautioned against limiting the
claimed invention to preferred embodiments or specific examples in the
specification.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47
(Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1328 (Fed. Cir. 2002)).
5 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (internal citation omitted).
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Therefore, we sustain the Examiner’s rejection under § 103(a) of
representative dependent claims 3 and 13. The remaining grouped claims
fall with their associated representative claim, 3 or 13. See Grouping of
Claims, supra.
Reply Brief
To the extent Appellant advances new arguments in the Reply Brief
not in response to a shift in the Examiner’s position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner’s decision rejecting claims 1—18 under pre-
AIA 35 U.S.C. § 103(a).
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.
§ 41.50(f).
AFFIRMED
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