Ex Parte Subbian et al

Patent Trial and Appeal Board

Feb 13, 2017

12147144 (P.T.A.B. Feb. 13, 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.
12/147,144 06/26/2008 Deepakumar Subbian H0018776/4874/108089 6413
92556 7590
HONEYWELL/HUSCH
Patent Services
115 Tabor Road
P.O.Box 377
MORRIS PLAINS, NJ 07950
02/15/2017 EXAMINER
STITT, ERIK V
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
02/15/2017 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):
patentservices-us @ honey well, com
amy. hammer @ hu schblackwell .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 DEEPAKUMAR SUBBIAN, MAYUR S. SALGAR, and
MARINE DRIVE
Appeal 2015-006568
Application 12/147,1441
Technology Center 2100
Before CATHERINE SHIANG, CARL L. SILVERMAN, and
KAMRAN JIVANI, Administrative Patent Judges.
JIVANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s decisions twice-rejecting claims 1—20, which are all the claims
pending in the present application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Honeywell International, Inc. as the real party in
interest. App. Br. 2.
Appeal 2015-006568
Application 12/147,144
STATEMENT OF THE CASE
The present application relates to an overlay window and associated
method for interacting with a video display. Spec. 11.
Claim 1 is illustrative and reproduced below with emphases and
bracketed material added.
1. A method for interacting with a video display, the
method comprising:
providing a user interface including a video display for
displaying video data of a single scene containing a plurality of
objects obtained by a camera from the scene and where each of
the plurality of objects is a respective feature of an image from
the camera;
generating an overlay window that is displayed over the
video data of the single scene, [LI] the overlay window defining
the video data of the single scene into a plurality of geometric
areas, each geometric area being displayed over respective
ones of the plurality of objects;
associating, in a database, each of the plurality of objects
with at least one of the plurality of geometric areas and with
data regarding the respective object;
[L2] providing an input to at least one of the geometric
areas displayed over a respective one of the plurality of objects
to select the object associated therewith; and
[L3] accessing, in the database, the associated data
regarding the selected object to generate a response from the
selected object.
The Rejections
Claims 8—20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—6, 8—13, and 15—19 stand rejected under 35 U.S.C. § 103(a)
over Dempski (US 2004/0119662 Al; June 24, 2004), Rohlfmg et al.
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Application 12/147,144
(US 2006/0171453 Al; Aug. 3, 2006), and Humbard et al. (US
2002/0069415 Al; June 6, 2002).
Claims 7, 14, and 20 stand rejected under 35 U.S.C. § 103(a) over
Dempski, Rohlfmg, Humbard, and Baumann (US 2007/0074129 Al;
Mar. 29, 2007).
ANALYSIS
I. Rejection of Claims 8—15 under 35 U.S.C. Section 101
Independent claim 8 and its dependent claims 9-15 are directed to:
“An overlay window for interacting with a video display, the overlay
window comprising . . . .”
The Examiner rejects these claims as directed to software per se and
states: “The applicant can overcome the 101 rejection by merely amending
the preamble of claim 8 and clarifying that the ‘overlay window’ is
displayed based on a system that is executing on a processor.” Non-Final
Act. 4.
Appellants contend the Examiner errs in this rejection because claim 8
recites an overlay window “displayed over video data.” App. Br. 7. This
limitation, according to Appellants, limits the scope of claim 8 “to structural
features of a human interface shown on a video display.” Id.', Reply Br. 2.
We are not persuaded by Appellants’ arguments. Our reviewing court
has clearly stated,
[t]he four categories [of § 101] together describe the exclusive
reach of patentable subject matter. If a claim covers material
not found in any of the four statutory categories, that claim falls
outside the plainly expressed scope of § 101 even if the subject
matter is otherwise new and useful.
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Application 12/147,144
In reNuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007). See also Microsoft
Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007) (“Abstract software code is
an idea without physical embodiment”). This reasoning is applicable in the
present case. The Examiner reasonably construes that claim 8 and its
dependent claims may be directed to software and, therefore, covers material
outside of the four statutory categories. Appellants fail to identify in the
record before us any disclosure in the Specification limiting the claimed
“overly window” to the four categories of statutory subject matter, and fail
to explain persuasively why the claimed “overlay window” is so limited
simply because it is “displayed over video data.”
Accordingly, we sustain the Examiner’s rejection of claims 8—15
under 35 U.S.C. § 101 as encompassing non-statutory subject matter.
II. Rejection of Claims 16—20 under 35 U.S.C. Section 101
Independent claim 16 and its dependent claims 17—20 recite, in
relevant part, “a tangible storage medium readable by a processing circuit
and storing instructions.”
The Examiner rejects these claims encompassing transitory signals,
which “are a natural phenomena and are not patentable.” Non-Final Act. 3.
Appellants contend the Examiner errs in this rejection because “the
medium is tangible which is inconsistent with the transmission or even the
storage of signals.” App. Br. 7; Reply Br. 2.
We are not persuaded by Appellants’ arguments. The recited
“tangible storage medium” is not claimed as non-transitory, and Appellants
fail to identify any disclosure in the Specification limiting that medium to
solely non-transitory forms via a definition or similar limiting language.
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Application 12/147,144
Therefore, the medium encompasses transitory forms and is ineligible under
§101. Our reviewing court has held computer-readable media
encompassing transitory signals to be non-statutory per se. Nuijten, 500
F.3d at 1357; see also MPEP § 2106 (I) (9th ed., Mar. 2014). Further,
limiting the claim to computer-useable media storing computer-readable
program code, although narrowing, does not sufficiently circumscribe the
claim to statutory subject matter. Ex parte Mewherter, 107 USPQ2d 1857,
1862 (PTAB 2013) (precedential-in-part) (machine-readable storage
medium non-statutory where Specification silent as to meaning).
Essentially, the term “tangible” is generally insufficient to render such a
“medium” statutory, and the term “non-transitory” is required.2
2 See Nuijten, 500 F.3d at 1353 (“However, while the claims are limited so
as to require some physical carrier of information, they do not in any way
specify what carrier element is to be used. The only limitations in Claim 14
address the signal’s informational content. Specifically, the signal must
encode some supplemental data, it must have been encoded according to a
‘given encoding process,’ and a sample, or single data point, located before
the location of the supplemental data must be different from the original.
The text of the claims is not limited by any specified physical medium, nor
do the dependent claims add any physical limitations. They again require
only that the signal carry certain information—a watermark, video, or audio.
Therefore, any tangible means of information carriage will suffice for all of
the claims at issue. Nuijten’s claims can of course be embodied by
conventional, known means, such as electrical signals, modulated
electromagnetic waves, and pulses in fiber optic cable. So long as some
object or transmission carries the information specified by Nuijten’s claim, it
falls within that claim’s scope regardless of its physical form. In summary,
some physical form for the signal is required, but any form will do, so long
as a recipient can understand the message—the nature of the signal’s
physical carrier is totally irrelevant to the claims at issue.” (Emphasis
added)).
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Accordingly, we sustain the Examiner’s rejection of claims 16—20
under 35 U.S.C. § 101 as encompassing non-statutory subject matter.
III. Rejection of Claims 1—6, 8—13, and 15—19 for Obviousness
The Examiner rejects these claims by finding specific teachings or
suggestions of each limitation in the cited references and offering articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. Non-Final Act. 5—9; Ans. 5—8. For instance, in the context of
claim 1, the Examiner finds Dempski teaches the majority of the claim
limitations, relies on Rohlfmg’s Figures 5c and 6b as meeting limitation LI,
relies on Humbard’s Figure 3 as meeting limitation L2, and finds that one of
ordinary skill in the art would have combined the cited (and thus known)
prior art elements according to known methods to yield predictable results,
namely “so that a user can manipulate the video” within Dempski’s object in
a segment, that segment not overlapping other segments, as taught by
Rohlfmg. See id.
Appellants contend the Examiner errs because the references fail to
meet the limitations of claims 1—6, 8—13, and 15—19. App. Br. 8.
Specifically, Appellants contend:
Nowhere within Demski, Rohlfmg et al. or Humbard et al. or
the combination of Demski, Rohlfmg et al. and Humbard et al.
is there any disclosure of the step of (or apparatus) “providing a
user interface including a video display for displaying video
data of a single scene containing a plurality of objects obtained
by a camera from the scene and where each of the plurality of
objects is a respective feature of an image from the camera;
generating an overlay window that is displayed over the video
data of the single scene, the overlay window defining the video
data of the single scene into a plurality of geometric areas, each
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Application 12/147,144
geometric area being displayed over respective ones of the
plurality of objects; associating, in a database, each of the
plurality of objects with at least one of the plurality of
geometric areas and with data regarding the respective object;
providing an input to at least one of the geometric areas
displayed over a respective one of the plurality of objects to
select the object associated therewith; and accessing, in the
database, the associated data regarding the selected object to
generate a response from the selected object.”
Id. at 8—9. Such a mere recitation of the claim elements and a naked
assertion that the corresponding elements are not found in the prior art is
insufficient to show error. 37 C.F.R. § 41.37(c)(iv)(2012); In reLovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011). Appellants’ arguments in the Reply Brief
seeking to elaborate on these bald statements (Reply Br. 3—4) are waived as
raised for the first time in the Reply Brief without a showing of good cause.
See 37 C.F.R. § 41.41(b)(2) (2012).
Appellants further contend the Examiner errs because “there is no
teaching or suggestion whatsoever in Demski, Rohlfmg et al. or Humbard et
al.” of the elements of claim 1. App. Br. 11. We are not persuaded by this
argument because it seeks to apply an overly rigid and formalistic test
contrary to the law. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 404, 418
(2007). We note Appellants’ contentions do not identify in the record before
us persuasive evidence that the cited combination would have been
“uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007).
Finally, Appellants contend the Examiner errs because the cited
references “do not recognize the problem solved by the claimed invention.”
App. Br. 12. We are not persuaded by this argument because, as our
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Application 12/147,144
reviewing court has long held: “One of ordinary skill in the art need not see
the identical problem addressed in a prior art reference to be motivated to
apply its teachings.” Cross Med. Prods., Inc. v. Medtronic Sofamor Danek,
Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005).
Accordingly, we sustain the Examiner’s rejection of claims 1—6, 8—13,
and 15—19 for obviousness.
IV. Rejection of Claims 7, 14, and 20 for Obviousness
Appellants advance no further arguments regarding this rejection
beyond those discussed in Section III. See generally App. Br. 8—12.
Accordingly, we sustain the Examiner’s obviousness rejection of claims 7,
14, and 20 for the reasons discussed above.
DECISION
We affirm the Examiner’s decisions rejecting claims 1—20.
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
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