Ivani, LLC

Patent Trials and Appeals Board

Feb 2, 2022

2020005112 (P.T.A.B. Feb. 2, 2022)

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. 14/824,994 08/12/2015 Matthew Wootton 317/2368US 4232 22822 7590 02/02/2022 LEWIS RICE LLC ATTN: BOX IP DEPT. 600 WASHINGTON AVE. SUITE 2500 ST LOUIS, MO 63101 EXAMINER BOWEN, RICHARD L ART UNIT PAPER NUMBER 2165 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): IPDEPT@LEWISRICE.COM KDAMMAN@LEWISRICE.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTHEW WOOTTON, CHRISTOPHER NISSMAN, JUSTIN MCKINNEY, ELIZABETH MAHON, MATTHEW WISMER, CLAIRE BARNES, JAMES WU, NATHAN LINTZ, and CAITLIN RILEY ___________ Appeal 2020-005112 Application 14/824,994 Technology Center 2100 ____________ Before CARL W. WHITEHEAD JR., ERIC B. CHEN, and MICHAEL J. ENGLE, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2020-005112 Application 14/824,994 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter is directed to identifying discrete components of an electrical network. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for collecting and storing electrical wiring diagram data comprising: providing a plurality of electrical components installed in an electrical system; providing a smart device comprising a microprocessor, a wireless networking transceiver, and a touch-screen input/output display; for each electrical component in said plurality of electrical components: associating with said each electrical component a tag having a memory containing a unique identifier for said tag; receiving said unique identifier at said smart device; entering, using said touch-screen input/output display of said smart device, metadata describing said each electrical component; 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ivani, LLC. (Appeal Br. 1.) Appeal 2020-005112 Application 14/824,994 3 transmitting, using said smart device, to a data server said unique identifier and at least some of said entered metadata; storing in a non-volatile computer-readable storage medium a dataset for said each electrical component, said created dataset comprising an indication of said transmitted unique identifier, and said indication being associated in said created dataset with an indication of at least of some at least some of said transmitted entered metadata. REFERENCES Name Reference Date Cozad, Jr. US 2013/0173435 Al July 4, 2013 Mallin US 2013/0176113 Al July 11, 2013 Downie et al. US 2009/0195363 Al Aug. 6, 2009 REJECTIONS Claims 1-8 and 10-19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Downie and Cozad. Claims 9 and 11 stand rejected under 35 U.S.C. § 103 as being unpatentable over Downie, Cozad, and Mallin.2 OPINION We are unpersuaded by Appellant’s arguments (Appeal Br. 19-21) that the Examiner improperly combined Downie and Cozad. The Examiner found that the mobile device of Cozad, which has a user interface, an RFID scanner, and sends data to a remote server, corresponds to the limitations “providing a smart device comprising a 2 Appellant does not present any arguments with respect to the rejections of dependent claims 9 and 11 under 35 U.S.C. § 103. Thus, any such potential arguments are deemed to be waived. Appeal 2020-005112 Application 14/824,994 4 microprocessor, a wireless networking transceiver, and a touch-screen input/output display” and “entering, using said touch-screen input/output display of said smart device, metadata describing said each electrical component.” (Final Act. 7.) The Examiner concluded that “it would have been obvious . . . to incorporate the smart device as disclosed in Cozad to Downie . . . [and] providing enhanced ways to add information about the data.” (Id. at 8-9.) We agree with the Examiner’s findings and conclusions. Downie relates to “automatically detecting, directing, and/or configuring the physical configuration of a complex system, such as a telecommunications system.” (¶ 3.) Figure 1 of Downie illustrates RFID system 8 (¶ 40), including RFID reader 30 (¶ 45), first component 12A associated with first RFID tag 16A, second component 12B associated second RFID tag 16B (¶ 41), and database unit 50 that stores information about RFID tags 16 (¶ 47). Cozad relates to “managing product location information for items located on shelves in a store or other location.” (¶ 1.) In particular, Cozad explains that a “mobile device receives a series of item identifiers that each correspond to one of multiple items located on a shelf in the store” and “the item identifiers are received from a scanner (e.g., barcode scanner, RFID scanner) operated by a user who is traversing the shelf and scanning one item after another.” (¶ 16.) Moreover, Cozad explains that “[t]he user interface also presents a section name, which may be manually entered or automatically determined.” (¶ 62.) A person of ordinary skill in the art would have recognized that incorporating the mobile device of Cozad, having a user interface, with RFID system 8 of Downie would improve Downie by providing the user with the ability to also manually enter information. See KSR Int’l Co. v. Appeal 2020-005112 Application 14/824,994 5 Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f 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.”). Thus, we agree with the Examiner that it would have been obvious to combine Downie with Cozad. (Final Act. 8-9.) Appellant argues the following: (i) “[t]he Examiner proposes that it would be obvious to modify Downie to remove its RFID system entirely and replace it with a smart phone to conduct manual data entry” and accordingly, “[t]he Examiner must provide the reason why a POSITA, upon reading Downie, would essentially disregard the entire invention” (Appeal Br. 19); and (ii) “[t]his can be further seen in that Examiner’s proposed modification requires that the POSITA essentially discard the invention of Downie entirely and fundamentally change its principle of operation” (id. at 21). However, the Examiner also proposed a modification based upon “incorporating[] the smart device as disclosed in Cozad to Downie . . . [and] providing enhanced ways to add information about the data.” (Final Act. 8- 9.) In other words, the Examiner’s proposed modification is based upon supplementing RFID system 8 of Downie with mobile device of Cozad, rather than replacement of such RFID system 8. (See id.) Appellant has not provided any persuasive arguments or evidence as to why the Examiner’s additional articulated reasoning for combining Cozad and Downie is erroneous. We find untimely Appellant’s additional arguments in the Reply Brief with respect to “teaching away” and non-analogous art. (Reply Br. 2-6.) We note that these new arguments were raised by Appellant for the first time in the Reply Brief, and they are not in response to a new issue brought up by Appeal 2020-005112 Application 14/824,994 6 the Examiner in the Answer. We therefore find these new arguments unavailing. Appellant is reminded that: The purpose of a reply brief is to ensure the Appellant the opportunity to have the last word on an issue raised by the Examiner. The reply brief enables the Appellant to address any new grounds of rejection the Examiner may have raised in the answer, or to address changes or developments in the law that may have occurred after the principal brief was filed. The reply brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor is the reply brief an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not. Giving cognizance to belated arguments in a reply would vitiate the force of the requirement in Board Rule 37(c)(1)(vii) that “[a]ny arguments or authorities not included in the brief . . . will be refused consideration by the Board, unless good cause is shown.” The reference in that section to the “reply brief filed pursuant to § 41.41” does not create a right for the Appellant to raise an argument in the reply brief that could have been raised in the principal brief but was not. Rather, that reference merely puts Appellants on notice that arguments that could be made in the reply brief, but are not, are waived. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative opinion). Therefore, the Examiner has properly combined Downie and Cozad to reject independent claim 1 under 35 U.S.C. § 103. Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103. Claims 2-8 and 10-19 depend from claim 1, and Appellant has not presented any additional substantive arguments with respect to these claims. Therefore, we sustain the rejection of claims 2-8 and 10-19 under 35 U.S.C. § 103, for the same reasons discussed with respect to independent claim 1. Appeal 2020-005112 Application 14/824,994 7 CONCLUSION The Examiner’s decision rejecting claims 1-19 under 35 U.S.C. § 103 is affirmed. DECISION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-8, 10-19 103 Downie, Cozad 1-8, 10- 19 9, 11 103 Downie, Cozad, Mallin 9, 11 Overall Outcome 1-19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED