Ex Parte Arts

Patent Trial and Appeal Board

Aug 9, 2016

11579643 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111579,643 09/04/2008
28289 7590 08/11/2016
THE WEBB LAW FIRM, P,C
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
HuibArts
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. CONFIRMATION NO.
0470-063688 5501
EXAMINER
MEHMOOD, JENNIFER
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
08/11/2016 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUIB ARTS 1
Appeal2014-008975
Application 11/579,643
Technology Center 2600
Before JOHNNY A. KUMAR, KAMRAN JIV ANI, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
KUMAR, 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 12-22.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Arboprofit (App. Br. 3).
2 Claims 1-11 have been cancelled.
Appeal2014-008975
Application 11/579,643
Invention
The present invention is related to an electronics apparatus that is
enabled to operate when in a standby mode despite being moved to a
location that differs from the permissible location (Spec. 2). In this manner,
travel for example, will not inhibit proper functioning but an object that is
stolen and taken to another location is disabled from functioning (Id.).
Representative Claim
Claim 12: An anti-theft device for an electronics apparatus,
compnsmg:
locating means for determining an actual location;
storage means for storing a permissible location; and
processing means connected to the locating means and
storage means, wherein the processing means is configured to:
retrieve the actual location from the locating means;
compare the actual location against the permissible
location; and
disable at least part of a functionality of the electronics
apparatus if the actual location is more than a predetermined
distance from the permissible location, [L 1] wherein the
processing means is further configured to enter the anti-theft
device in a standby mode, in which the electronics apparatus is
never disabled by the anti-theft device even if the electronic
apparatus is not at the permissible location, and [L2] wherein
the user can activate the standby mode for a predetermined
period of time at the permissible location.
(Bracketed lettering added and contested limitations emphasized.)
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Appeal2014-008975
Application 11/579,643
Rejections
A. Claims 12-16, 18, 19, 21, and 22 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by, Hopkins (WO 01/75830 Al; Oct 11,
2001) (Final Act. 2--4).
B. Claim 17 is rejected under 35 U.S.C. § 103(a) as being obvious over
Hopkins in view of Applicant's Admitted Prior Art ("AAPA") (Final
Act. 4--5).
C. Claim 20 is rejected under 35 U.S.C. § 103(a) as being obvious over
Hopkins in view of Glenn (US 5,406,261; Apr 11, 1995) (Final Act.
5).
Grouping of Claims
Based on Appellant's arguments, we decide the appeal of claims 12-
22, on the basis of representative claim 12. Appellant has not argued the
remaining claims separately (App. Br. 13). See 37 C.F.R. § 41.37(c)(l)(iv)
(2012).
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 reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellant's arguments. (Ans. 4--14.) However,
we highlight and address specific findings and arguments for emphasis in
our analysis below.
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Appeal2014-008975
Application 11/579,643
Claim Construction - representative Claim 12
As an initial matter of claim construction, it is well settled that
"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).
Claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997). Accord Catalina Marketing Int'!., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (The patentability
of an apparatus claim "depends on the claimed structure, not on the use or
purpose of that structure."). "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." Schreiber, 128 F.3d at 1477 (citations omitted); see also
Hewlett-Packard, 909 F.2d at 1468. Moreover, the Supreme Court has
held: "[t]he inventor of a machine is entitled to the benefit of all the uses to
which it can be put, no matter whether he had conceived the idea of the use
or not." Roberts v. Ryer, 91 U.S. 150, 157 (1875). See also MPEP § 2114. 3
3 As an underlying subsidiary finding of fact that informs our claim
construction, the MPEP (extrinsic to the record) guides regarding the
patentable weight to be given "wherein" clauses: Claim scope is not limited
by claim language that suggests or makes optional but does not require steps
to be performed, or by claim language that does not limit a claim to a
particular structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of the language
in a claim are: (A) "adapted to" or "adapted for" clauses; (B) "wherein"
clauses; and (C) "whereby" clauses. MPEP § 2111.04 (8th ed., Rev. 9, Aug.
2012).
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Appeal2014-008975
Application I 1/579,643
Given this controlling guidance, we conclude the functional language
recited in the "wherein" clause of contested limitation [LI] does not further
limit the structure of the claimed "processing means of an anti-theft device"
(apparatus). This limitation contains the generic placeholder "processing
means" and has been interpreted under 35 U.S.C. § I I2, sixth paragraph by
the Examiner (Final Act. 2) to have corresponding structure described on
page 6 of Appellant's specification: "The processing means I may e.g.
comprise digital processing circuits, analogue processing circuits or a
combination of both .... " We conclude that the applied prior art must, at
the outset, disclose the structure of a digital or analog processing circuit in
order to meet the functional limitation [LI].
Moreover, we conclude limitation [LI] "wherein the processing
means is further configured to enter the anti-theft device in a standby mode,
in which the electronics apparatus is never disabled by the anti-theft device
even if the electronic apparatus is not at the permissible location," and
contested limitation [L2] "wherein the user can activate the standby mode
for a predetermined period of time at the permissible location" are
statements of intended use. Our reviewing court guides: "An intended use
or purpose usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the invention
operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
320 F.3d I339, I345 (Fed. Cir. 2003).
This reasoning is applicable here. Thus, a question arises as to how
much patentable weight, if any, should be given to the contested functional
statements of intended use recited in each of limitations [LI] and [L2] of
apparatus claim I 2.
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Appeal2014-008975
Application 11/579,643
ivforeover, we particularly observe the "wherein" clause [L 1] requires
the capability of entering a device in a standby mode, defined in the claim by
the enablement of the device relative to a non-permissible location,
accompanied by an implied enablement of the device relative to a
permissible location. In light of the 112, sixth paragraph analysis discussed
supra, we determined that the structure for performing the recited function
corresponds generally to digital and analog processing circuits. It is within
reasonable expectation that a circuit capable of being configured to operate
in a permissible location and also configured to not operate in a non-
permissible location, would reasonably be capable of additionally being
configured to operate in a non-permissible location if some additional input
other than location-based input is accepted. Therefore, we proceed with our
analysis infra noting that limitation [L 1] is met by the structure of a
processing circuit which can enable or disable a device relative to both
location-based input and non-location-based input.
A similar analysis ensues in our review of limitation [L2], and we
conclude it to be met by the structure of a processing circuit that can enable
a device for a pre-determined period of time relative to either a non-
permissible location or a permissible location.
Assuming, arguendo, our reviewing court may give full patentable
weight to some or all of the contested functional limitations and statements
of intended use recited in apparatus claim 12, we nevertheless fully consider
Appellant's arguments on the merits. We have considered all of Appellant's
arguments in both the principal Brief and the Reply Brief, and evidence of
record that has been presented in support.
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Appeal2014-008975
Application 11/579,643
Rejection of claims j2-j6, j8, j9, 2j, and 22 over Hopkins under §j02
Addressing limitation [L 1] within the meaning of representative claim
12, Appellant contends:
The only teaching provided by the Hopkins publication
[regarding a standby mode] is that an apparatus will only remain
functioning at a permissible location, and this is implemented
using a "heartbeat" signal which needs to be received by the
apparatus at regular intervals. If this "heartbeat" signal is not
received, normal functioning of the apparatus ceases ....
. . . [T]here is not a single mention of a standby mode in
this or any other portion of the Hopkins publication.
App. Br. 11.
The Examiner finds that Hopkins discloses enabling the use of an
electronic apparatus if an authorized card or biometric sensor is present
(Final Act. 3 (citing Hopkins 10, 11. 20-30); Ans. 10), and also discloses
detection of a permissible location (Ans. 10 (citing Hopkins 14, 1. 30-15,
1. 13)). We specifically note that the cited passages of Hopkins state, "Thus
a request from a machine 123 outside of the authorized boundary 122 will
receive no operational permissions, while the machine 121 will be
authorized to operate subject to sensed smart card presence" (Hopkins 15,
11. 1-3). Therefore, we conclude that Hopkins meets the structural
capabilities of a processing means configured to enter the anti-theft device in
a standby mode, in which the electronics apparatus is never disabled by the
anti-theft device even if the electronic apparatus is not at the permissible
location, through a badge or authorized card enablement. In other words,
this type of authorization means will allow the operator to enable an
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Appeal2014-008975
Application 11/579,643
apparatus regardless of its location. For these reasons, we find Appellant's
argument unavailing with respect to contested limitation [L 1].
Turning to limitation [L2], within the meaning of representative claim
12, Appellant contends:
The heartbeat timer as disclosed by Hopkins is a simple timer
which indicates at which intervals the system should check
whether or not the secured apparatus is at a proper location.
Hopkins thus teaches that it is not necessary for the system to
make a continuous check, a periodic check is deemed sufficient,
and this is implemented using the heartbeat timer.
In contrast, the claimed invention provides the feature that
a check whether or not the electronic apparatus is at a permissible
location is not executed during a time period selectable by the
user. This feature enables the apparatus to be repaired at a repair
shop, and a mobile device (such as a laptop) to be taken outside
of a permissible location for a set time period, etc.
Reply Br. 5.
However, the Examiner finds Hopkins explicitly discloses a
predetermined period for permissible use (Final Act. 3 (citing Hopkins l 0 l.
30)). We note that the cited passage-"Sensor presence may also be a
limited period authorisation such that the timer decays and causes a further
SG Plus message to be transmitted as indicated at step 65" (Hopkins 10,
11. 30-32}-reasonably corresponds to the claimed activation of a standby
mode for a predetermined time at a permissible location. Appellant does not
explain why the cited timer of Hopkins does not correspond to the claimed
predetermined time for activation (App. Br. 10). Therefore, we agree with
the Examiner that Hopkins discloses a timer that enables use of a device in
an equivalent standby mode at a permissible location for a predetermined
period of time. For these reasons, we are unpersuaded of error in the
Examiner's rejection of limitation [L2].
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Appeal2014-008975
Application 11/579,643
Rejection of claim 17 over Hopkins and AAPA, and Rejection of claim 20
over Hopkins and Glenn under §103
Appellant advances no separate arguments regarding the Examiner's
rejections of dependent claims 17 and 20. Arguments not made are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Accordingly, on this record, we are not persuaded of error regarding
the Examiner's underlying factual findings and ultimate legal conclusions
regarding the Examiner's rejection under§ 102 of representative
independent claim 12 over Hopkins. Thus, we sustain the Examiner's
rejection of claim 12 and grouped claims 13-22, which fall with claim 12.
DECISION
We affirm the Examiner's decision rejecting claims 12-16, 18, 19, 21,
and 22 under 35 U.S.C. § 102, and claims 17 and 20 under 35 U.S.C. § 103.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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