Ex Parte Bernstein et al

Patent Trial and Appeal Board

Jan 30, 2017

13342914 (P.T.A.B. Jan. 30, 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.
13/342,914 01/03/2012 Ian H. BERNSTEIN 17630.0007USU6 1641
23552 7590 02/01/2017
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
JABR, FADEY S
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
US PT023552@ merchantgould .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN H. BERNSTEIN, ADAM WILSON, and PAUL BERBERIAN
Appeal 2015-000296
Application n/342,9141
Technology Center 3600
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1—7 and 10—23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates “to a self-propelled device, and
more specifically, to a system and method for controlling a self-propelled
device in connection with a virtual environment.” (Spec. 12.)
1 According to Appellants, “[t]he real party in interest is Orbotix, Inc. of
Boulder, CO - the assignee of record.” (Appeal Br. 3.) We note, however,
that an assignment from Orbotix, Inc. to Sphero, Inc. was filed on
November 17, 2016.
Appeal 2015-000296
Application 13/342,914
Claims 1,19, and 20 are the independent claims on appeal. Claim 1 is
illustrative. It is reproduced below:
1. A computer-implemented method for controlling a self-
propelled device, the method comprising:
(a) generating a user interface on a display screen of a
mobile computing device, the mobile computing device
configured to control the self-propelled device, the user interface
providing a content that includes an object representation of the
self-propelled device;
(b) detecting the user performing a set of one or more
actions on the mobile computing device;
(c) interpreting the set of actions as a command that
specifies one or more parameters for moving the self-propelled
device;
(d) moving the self-propelled device in accordance with
the one or more parameters; and
(e) displaying the object representation of the self-
propelled device as moving or changing a position based on
movement of the self-propelled device;
wherein (a) includes prompting the user to perform one or
more of the actions in the set of actions using the user interface
by placing a finger or hand on the display screen on which the
user interface is generated.
REJECTION
Claims 1—7 and 10-23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schmelzer (US 2012/0009845 Al, pub. Jan. 12, 2012) and
Bimbaum (US 8,352,643 B2, iss. Jan. 8, 2013).
ANALYSIS
Claim 1
Appellants argue that Schmelzer and Bimbaum do not suggest or
disclose “prompting the user to perform one or more of the actions in the set
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of actions using the user interface by placing a finger or hand on the display
screen on which the user interface is generated,” as recited in claim 1.
(Appeal Br. 10-13.)
Schmelzer discloses “a self-propelled toy that interacts with human
users, receiving assistance from those users in reaching a destination, and
communicates with other self-propelled toys, with human users, and with
social media forums via various networks.” (Schmelzer, Abstract.)
Specifically, Schmelzer discloses that the toy can send a “request for
assistance signal.” In particular, it “can send text messages and emails to
users asking for assistance,” and “[t]he signal can also detail the type of
assistance that the device desires.” {Id. 128.) “Assistance can include
rerouting the device.” {Id. 129.) Users can interface with the device via a
wireless connection such as a “user’s computing device (e.g., smartphone
. . .). {Id. 133; see also id. 16.) The user’s computing device can include a
keyboard and a touchpad. {Id. H 60, 62.) Authorized “users can alter or
suggest alterations to the route ... or set/suggest an entirely new route or
waypoint.” {Id. 137; see also Answer 3 4.) In short, Schmelzer discloses
prompting the user with a request for assistance to which the user responds
by performing a set of one or more actions by placing a finger on the
keyboard or touchpad of the computing device. {See Answer 4.)
Additionally, the Examiner finds that Bimbaum discloses “prompting
the user to place his finger or hand on a display screen.” {Id, citing
Bimbaum, col. 10,11. 33—41.)
Bimbaum “relates to a system configured to present interactive
content to a user that is manipulating a peripheral,” such as a toy.
(Bimbaum, col. 1,11. 33—35; col. 10,1. 59.) Bimbaum discloses that
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Application 13/342,914
communication between the user and the peripheral “may include virtual
touch communications where the user can feel the reaction of interactive
messaging elements.” {Id. at col. 10,11. 35—37.) In particular, Bimbaum
discloses that “the user may provide information to the user interface 316 by
manipulating the touch screen.” {Id. at col. 9,11. 56—59.)
Therefore, we are not persuaded that the cited art fails to teach or
suggest “prompting the user to perform one or more of the actions in the set
of actions using the user interface by placing a finger or hand on the display
screen on which the user interface is generated,” as recited in claim 1.
Appellants next argue that the cited art does not disclose “interpreting
the set of actions as a command that specifies one or more parameters for
moving the self-propelled device,” as recited in claim 1. {See Appeal
Br. 13—14.) Appellants acknowledge that Schmelzer “discloses that
‘[authorized] users can alter or suggest alterations to the route’ for the
device, and ‘enter information related to ... knowledge [of a different route]
or set/suggest an entirely new route or waypoint.’ Schmelzer, Para. [0037].”
{Id. at 14, brackets in original.) But, Appellants argue, “Schmelzer does not
specify ‘interpreting the set of actions as a command that specifies one or
more parameters for moving the self-propelled device, ’ where ‘the set of
actions’ are detected by the mobile computing device and performed by the
user on the mobile computing device, as stated in Claim 1.” {Id., emphasis
omitted.)
The Examiner finds that Schmelzer discloses “controlling movement
of the toy that interacts with users using communications.” (Answer 3,
citing Schmelzer, Abstract.) Schmelzer further discloses that the disclosed
“method includes moving the self-propelled toy along a route,” (Schmelzer
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1 6) and that a user can set a route for the toy (id. 137). (See Answer 3 4.)
Appellants do not persuasively argue why the disclosure in Schmelzer of
specifying a route for the device fails to teach or suggest specifying one or
more parameters for moving the device, i.e., Appellants do not explain why
specifying a route for moving the device is not specifying one or more
parameters for moving the device. Nor do Appellants persuasively argue
why the teaching of a user inputting a route does not teach that the toy will
interpret that input, i.e., the set of actions of inputting the new route, as a
command that specifies one or more parameters, i.e., the route, for moving
the toy.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1. Independent claims 19 and 20 contain similar language
and Appellants make similar arguments. (See Appeal Br. 17—20.)
Therefore, for similar reasons, we are not persuaded that the Examiner erred
in rejecting claims 19 and 20. Appellants do not separately argue dependent
claims 2—6, 10-18, and 21—23. Thus, dependent claims 2—6, 10—18, and 21—
23 fall together with their respective independent claims. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
Claim 7
Claim 7 recites: “The method of claim 1, wherein (e) includes using a
sensor on the mobile computing device to detect the device’s movement.”
Appellants argue that the Examiner’s finding that paragraph 20 of
Schmelzer discloses this limitation is in error because “while Schmelzer may
disclose that the self-propelled toy can communicate with a computing
device, nowhere does Schmelzer disclose ‘using a sensor on the mobile
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computing device to detect the device’s movement,’ as recited in Claim 7.”
(Appeal Br. 16.)
Limitation (e) of claim 1, which is referenced in claim 7, recites:
“displaying the object representation of the self-propelled device as moving
or changing a position based on movement of the self-propelled device.”
Because the device that has “movement” is the self-propelled device, we
construe the phrase in claim 7 “to detect the device’s movement” to mean
“to detect the self-propelled device’s movement.” Additionally, we note that
claim 7 does not require the mobile computing device to directly sense
movement of the self-propelled device.
Schmelzer discloses a self-propelled device that includes “a
communication device or module 206 (e.g., a transceiver) that can include a
Bluetooth or Wi-Fi connection,” and that the communication module can
include “a Global Positioning System (GPS) receiver, a cellular network
triangulation component, accelerometer(s), or other location-aware devices.”
(See Answer 7; see also Schmelzer 122.) Schmelzer also discloses that a
mobile computing device, e.g., a smartphone, can communicate with a self-
propelled device via, e.g., Bluetooth or Wi-Fi. (See Answer 7, see also
Schmelzer 120.) Further, Schmelzer explains that a user can view the
mobile “device’s current status, location, destination, route, and other data
via any known connection technique such as Bluetooth, Wi-Fi, or USB.”
(Schmelzer 131.)
In other words, Schmelzer discloses using a sensor on a smartphone
capable of sensing Wi-Fi or Bluetooth communications to detect information
sent from the self-propelled device regarding the self-propelled device’s
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movement. Therefore, we are not persuaded that the Examiner erred in
rejecting claim 7.
DECISION
The Examiner’s rejection of claims 1—7 and 10—23 under 35 U.S.C.
§ 103(a) is affirmed.
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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