Ex Parte Wulff et alDownload PDFPatent Trial and Appeal BoardFeb 16, 201712648459 (P.T.A.B. Feb. 16, 2017) Copy Citation 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. 12/648,459 12/29/2009 Thomas Wulff SBL01752A-C01 3860 126568 7590 02/21/2017 'Zebra Teehnnlnaies; Pnmnratinn EXAMINER 3 Overlook Point Lincolnshire, IL 60069 GREENE, JOSEPH L ART UNIT PAPER NUMBER 2452 NOTIFICATION DATE DELIVERY MODE 02/21/2017 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): docketing @ zebra, com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS WULFF, ALISTAIR HAMILTON, SUDHIR BHATIA, DAVID BELLOWS, and KEVIN CORDES Appeal 2016-006847 Application 12/648,459 Technology Center 2400 Before CAROLYN D. THOMAS, MICHAEL M. BARRY, and MICHAEL J. ENGLE, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Non-Final Rejection of claims 45—67, all the pending claims in the present application. Claims 1—44 are canceled. See Claims Appendix. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The present invention relates generally to monitoring a mobile computing arrangement. See Abstract. Appeal 2016-006847 Application 12/648,459 Claims 45 and 56 are illustrative: 45. A system comprising: a plurality of mobile computing devices, each of the plurality of mobile computing devices comprising: a sensor detecting first data of an event including a motion and directional orientation of its respective mobile computing device; a processor comparing the first data of its respective mobile computing device to a second data to determine a level of abuse experienced by the respective mobile computing device, the second data including a predetermined threshold value; a storage device storing at least the first data of the event of its respective mobile computing device to create an event history of the respective mobile computing device; and a wireless communication arrangement coupled to the processor, the wireless communication arrangement transmitting the event history of its respective mobile computing device to a remote device. 56. A method of determining abuse of a first set of mobile computing devices in a mobile network comprising a plurality of mobile computing devices, the method comprising: detecting, by each of a plurality of the mobile computing devices, first data of an event including a motion and directional orientation of its respective mobile computing device using a sensor; comparing, by each of the plurality of the mobile computing devices, the first data to a second data, the second data including a predetermined threshold value; determining, by the first set of the plurality of the mobile computing devices, the abuse experienced by its respective mobile computing device based on the comparison of the first 2 Appeal 2016-006847 Application 12/648,459 data of its respective mobile computing device to the second data; and transmitting, by each of the first set of the plurality of the mobile computing devices, the first data of its respective mobile computing device to a remote device. Appellants appeal the following rejections: Rl. Claims 45—50, 55—59, and 63—671 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Edgerton (US 5,835,298, Nov. 10, 1998) and Merritt (US 2004/0039424 Al, Feb. 26, 2004). R2. Claims 51—53, 60, and 61 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Edgerton, Merritt, and Adams (US 7,655,331 B2, Feb. 2, 2010); and R3. Claims 54 and 62 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Edgerton, Merritt, and Official Notice. ANALYSIS Claims 45, 47—56, 58, 59, 63—65, and 67 Issue: Did the Examiner err in finding that Edgerton and Merritt collectively teach or suggest the limitations as set forth in the claims? Appellants contend Edgerton’s “sensor is an accelerometer that does not detect orientation [because that] would require a magnetometer or similar device” (App. Br. 9). In response, the Examiner finds that Edgerton “explicitly states that it detects the motion of the device in the x, y, and z planes” (Ans. 11). We agree with the Examiner. 1 Although the statement of the rejection in the Non-Final Action only lists claims 45—50, 55—59, 63, and 64, we note that claims 65—67 are also included in the body of the rejection (see Non-Final Act. 2—7). 3 Appeal 2016-006847 Application 12/648,459 For example, as the Examiner finds, Edgerton discloses “[t]he three- axis accelerometer 62 measures the local acceleration of the hard drive 13 in the X, Y, and Z directions” (5:50-52) and that “[t]his pre-calibration should be checked for all three axes (x, y, z). This step is necessary to ensure the system can properly handle a wide variety of device orientations” (8:53—56). In other words, Edgerton’s three-axis accelerometer measures both motion and directional orientation. Thus, we find unavailing Appellants’ contention that Edgerton does not detect orientation given the aforementioned disclosure. Appellants further contend that in Edgerton the “storage could store the event measurement temporarily, which again means that there is no event history stored,” because “an event history . . . means many measurement events are stored” (App. Br. 9). In other words, Appellants contend the claimed “event history” must include a plurality of (i.e., “many”) measurement events. As a matter of claim construction, we find that the “event history” as recited in the claims does not require that a plurality of, i.e., “many” measurement events are stored, as proffered by Appellants. Instead, claim 45 (and similar claims) merely recite storing at least the first data of the event... to create an event history (see claim 45). In other words, merely storing (even temporarily) the first data of the event (i.e., a single data event) can create an event history. Because Appellants concede that Edgerton’s “storage could store the event measurement temporarily” (see App. Br. 9), we agree with the Examiner that Edgerton’s “data points have been recorded for comparison” (see Ans. 10). Thus, for at least the reasons noted supra, we find unavailing Appellants’ contention that Edgerton does not teach storing an event history 4 Appeal 2016-006847 Application 12/648,459 and that “many measurement events” must be stored in the claimed “event history.” We further note that although independent claim 45 includes the “event history” limitation, independent claims 56 and 64 do not include this limitation. Thus, this argument is not commensurate with the scope of independent claims 56 and 64. Appellants also contend that “Merritt fails to teach or suggest that data of an event including a motion and directional orientation of the medical device (IMD 100) is transmitted to a remote device” (App. Br. 10) (emphasis omitted). In response, the Examiner finds, and we agree, that “Edgerton has already been shown to teach the limitations regarding recording the devices orientation and motion” (Ans. 12). In other words, Appellants’ argument against Merritt separately from Edgerton does not persuasively rebut the combination made by the Examiner. One cannot show non-obviousness by attacking references individually, where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425-26 (CCPA 1981). Claims 46 and 57 Dependent claims 46 and 57 each require associating with the first data additional information including “at least a status of its respective mobile computing device, environmental data of its respective mobile computing device, and date and time of the event.” This list of additional information types is separated by “and,” indicating that all of the types are required, not just one. Contra Ans. 4 (incorrectly reciting the list separated by “or” rather than “and”); Non-Final Act. 4 (same). Appellants contend the 5 Appeal 2016-006847 Application 12/648,459 Examiner errs in finding Edgerton teaches or suggests these requirements because “Edgerton simply describes acceleration data, and Merritt (paragraph 60) does not describe device status or environment” (App. Br. 11). Here, the Examiner appears to ignore Appellants’ aforementioned contentions as the record is devoid of any response thereto. An Examiner cannot entirely ignore any limitation in a claim while determining whether the subject matter of the claim would have been obvious. In re Wilson, 484 F.2d 1382, 1385 (CCPA 1970). Accordingly, we are constrained to reverse the rejection of claims 46 and 57. Claim 60—62 and 66 Appellants contend that “the Office Action re-introduces Hinckley (US 7,289,102) from an earlier Office Action, as describing storing an event history. . . . [Tjhis is not the same as storing a measurement history of shock events in a remote server” (App. Br. 11). As an initial matter, we note that the body of the rejection for claim 66 (which claims 60-62 depend from) also cites “Hinckley” (see Non-Final Act. 7). However, although the Examiner discusses Hinckley in the body of the rejection, the Examiner does not list this reference in the statement of the rejection nor give the citation for this reference. At best, discussing a reference in the body of the rejection without affirmatively listing it in the statement of rejection leads to confusion as to the true grounds of the rejection. Such a circumstance also greatly increases the chance that an Appellant will overlook the unlisted reference and/or misunderstand the true evidentiary basis for the rejection. For these reasons, every reference 6 Appeal 2016-006847 Application 12/648,459 discussed in the rejection should be listed in the statement of the rejection to give Appellants appropriate notice of the evidence relied upon in the rejection. See In reHoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (“Where a reference is relied on to support a rejection, whether or not in a ‘minor capacity, ’ there would appear to be no excuse for not positively including the reference in the statement of rejection.”); see also MPEP § 706.02(j). To whatever extent Hinckley may be applicable to the instant claimed invention, we will not consider it here because Hinckley is not part of the statement of rejection. Id. Regardless, the limitations which Appellants argue (i.e., an event history) were addressed supra regarding the combination of Edgerton and Merritt (see also Non-Final Act. 2-4). So, even if we agree with Appellants’ contention regarding Hinckley (which we are not considering), we note that one cannot show non-obviousness by attacking references individually, where the rejection is based on a combination of references. Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425-26. Accordingly, we affirm the rejection of claims 60-62 and 66. DECISION We reverse the Examiner’s § 103(a) rejections of claims 46 and 57. We affirm the Examiner’s § 103(a) rejections of claims 45, 47—56, and 58—67. 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-IN-PART 7 Copy with citationCopy as parenthetical citation