Ex Parte VanRiper et alDownload PDFPatent Trial and Appeal BoardFeb 17, 201610964282 (P.T.A.B. Feb. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/964,282 10/13/2004 92556 7590 HONEYWELL/HUSCH Patent Services 115 Tabor Road P.O.Box 377 MORRIS PLAINS, NJ 07950 02/19/2016 FIRST NAMED INVENTOR Ryan A. VanRiper 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. H0007580 8364/92338(1360) CONFIRMATION NO. 2712 EXAMINER DIEP, NHON THANH ART UNIT PAPER NUMBER 2487 NOTIFICATION DATE DELIVERY MODE 02/19/2016 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 Exparte RYAN A. VANRIPER, THOMAS ANDERSON WAGNER, and JOHN A. PHELPS Appeal2014-004522 Application 10/964,282 Technology Center 2400 Before ELENI MANTIS MERCADER, JAMES W. DEJMEK, and SCOTT B. HOWARD, Administrative Patent Judges. HOW ARD, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 3, 13, 26, 30-32, and 34--36, which constitute all of the claims pending in this application. Claims 1, 2, 4--12, 14--25, 27-29, and 33 have been cancelled. App. Br. 14--19 (Claims App'x). 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. Appeal2014-004522 Application 10/964,282 THE INVENTION The claimed invention is directed to a system and method for enhanced situation awareness using RFID technology to track first responders. Spec. 2--4. Claim 26, reproduced below, is illustrative of the claimed subject matter: 26. A system which tracks location and movement of first responder personnel in a region during an emergency compnsmg: a plurality of cameras; an RFID tag adapted to be carried on a uniform or helmet of a first responder of the first responder personnel during an emergency in the region; a plurality of radio frequency transmitter/receiver units throughout the region, said transmitter/receiver units are used with the RFID tag, the units provide location information of the first responder in the region, wherein when the tag receives a signal from one of the transmitter/receiver units, a reply signal is transmitted by the tag and sensed by said one transmitter/receiver unit so that as the first responder moves about the region the location of the personnel is continuously tracked in real time; a switch for selecting a camera from the plurality of cameras; a database which contains at least, a pre-stored set of representations, each representation illustrating an aspect of a region being monitored; and control software coupled to the transmitter/receiver units, the switch and the database that selects a pre- stored representation of a map or floor plan of the region and a camera in response to real time location information from the one transmitter/receiver unit to visually display in real time the selected pre-stored representation of the map or floor plan of the region and real time images from the selected camera. 2 Appeal2014-004522 Application 10/964,282 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Sengupta US 6,359,647 Bl Mar. 19,2002 Burkley US 7 ,034,678 B2 Apr. 25, 2006 Washington US 7,151,454 B2 Dec. 19, 2006 REJECTION Claims 3, 13, 26, 30-32, and 34--36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sengupta in view of Washington and Burkley. Final Act. 6-9. ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' contentions that the Examiner erred. In reaching this decision, we consider all evidence presented and all arguments made by Appellants. We disagree with Appellants' arguments regarding the pending claims and we incorporate herein and adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 6-9), and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments (Ans. 6-13). We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim 26 for emphasis as follows. First, Appellants argue Sengupta is directed to a camera based optical tracking system and the proposed modification to an RFID tracking system would change the principle of operation. App. Br. 9. According to 3 Appeal2014-004522 Application 10/964,282 Appellants, "'[i]f the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious."' Id. (quoting In re Ratti, 270 F.2d 810 (CCPA 1959)). We are not persuaded that Appellants have established that the proposed change would result in such a change in the principle of operation of the prior art as to make the claimed invention nonobvious. If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). For example, our reviewing court held that an invention was not obvious where the prior taught the device required rigidity for operation whereas the claimed invention required resiliency. Ratti, 270 F.2d at 813. We do not find using an RFID tracking system instead of an optical tracking system is such a change so that Sengupta will no longer work for its intended purpose. Appellants provide no evidence in support of their argument. See App. Br. 9. "Attorney's argument in a brief cannot take the place of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), the Supreme Court held that "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." Id. at 417. We agree 4 Appeal2014-004522 Application 10/964,282 with the Examiner, and adopt the Examiner's findings that the proposed modification would result in an enhancement, not a change of principle: [T]he combination would not change the principal [sic] of operation of the prior art as argued, but rather the combination would result in an improvement over the prior art of Sengupta et al by using the [RFID] technologies in tracking emergency personnel in place of or in addition to the optional alarm sensors of Sengupta et al, and to select a pre-stored representation of a map or floor plan of the region and a camera in response to real time location information from the one transmitter/receiver unit to visually display in real time the selected pre-stored representation of the map or floor plan of the region and real time images from the selected camera. The RFID technologies would enhance the system of Sengupta et al by accurately and easily locate and track personnel whenever and wherever personnel goes without having to install optional sensors all over the place. Ans. 8-9 (emphasis added). Second, Appellants argue none of the references teach an "RFID tag adapted to be carried on a uniform or helmet of a first responder.'' App. Br. 9. The Examiner finds the prior art teaches having first responders carry an RFID tag with them. Final Act. 9; Ans. 10. The Examiner further finds "adapting the [RFID] tag to either on a uniform or helmet of the first responder [to be] an obvious designer's choice." Final Act. 9; Abstract. Appellants have not persuaded us that the Examiner erred. "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." KSR, 550 U.S. at 417. Appellants have not shown that choosing the location of the placement of the RFID tag "result[ s] in a difference in function or give[s] unexpected results." In re Rice, 341 F.2d 309, 314 (CCPA 1965). 5 Appeal2014-004522 Application 10/964,282 Third, Appellants argue none of the references teach the "control software" limitation of claim 26. App. Br. 9-10. Appellants discuss the teachings of the references individually. See id. at 8-9. The Examiner finds "the prior art disclose all the claimed elements." Ans. 9. The Examiner further finds "one skill in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results." Id. Accordingly, the Examiner concludes it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the "control software" recited in claim 26. Id. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Furthermore, in KSR, the Supreme Court held that "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR, 550 U.S. at 417. Appellants have not shown that the combination of the various references in making the control software would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Accordingly, Appellants have not persuaded us the Examiner erred. Finally, Appellants argue the Examiner failed to make a prima facie case of obviousness. App. Br. 10-12. In addition to the arguments discussed above, Appellants argue "that none of the cited references 6 Appeal2014-004522 Application 10/964,282 recognize the problem solved by the claimed invention." App. Br. 12. According to Appellants, since the concept of the claimed invention "is not recognized, there would be no reason to combine the cited references (even if all of the claim elements were present within the combination of Sengupta et al., Washington and Burkley et al. (which they are not))." Id. Our reviewing court guides it is irrelevant that the prior art and the present invention may have different purposes. See Nat 'l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) ("A finding that two inventions were designed to resolve different problems ... is insufficient to demonstrate that one invention teaches away from another."). That is, it is sufficient that references suggest doing what Appellants did, although the Appellants' particular purpose was different from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372 F.2d 535, 538-39 (CCPA 1967)). "Obviousness is not to be determined on the basis of purpose alone." In re Graf, 343 F.2d 774, 777 ( CCP A 1965). "Common sense teaches ... that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." KSR, 550 U.S. at 420; see also id. at 421 ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). Accordingly, we are not persuaded that the Examiner failed to make a prima facie case of obviousness. For the reasons discussed above, we sustain the Examiner's rejection of claim 26, along with the rejection of claims 3, 13, 30-32, and 34--36, which are not argued separately. 7 Appeal2014-004522 Application 10/964,282 DECISION For the above reasons, we affirm the Examiner's rejection of claims 3, 13, 26, 30-32, and 34--36. 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 8 Copy with citationCopy as parenthetical citation