Ex Parte CurryDownload PDFPatent Trial and Appeal BoardMay 15, 201712123711 (P.T.A.B. May. 15, 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. 12/123,711 05/20/2008 John E. Curry TRMB-4266 1332 112877 7590 05/17/2017 Kilpatrick Townsend & Stockton LLP Trimble Navigation Limited Mailstop: IP Docketing - 22 1100 Peachtree Street, Suite 2800 Atlanta, GA 30309 EXAMINER NGON, RICKY ART UNIT PAPER NUMBER 2862 NOTIFICATION DATE DELIVERY MODE 05/17/2017 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): ipefiling@kilpatricktownsend.com KT S Docketing2 @ kilpatrick. foundationip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN E. CURRY Appeal 2015-005335 Application 12/123,711 Technology Center 2800 Before ADRIENE LEPIANE HANLON, WESLEY B. DERRICK, and LILAN REN, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision finally rejecting claims 1 and 4—32. We have jurisdiction under 35 U.S.C. § 6(b). According to the Appellant’s Specification, the invention “relates to systems and methods for measuring precipitation impact on construction and engineering sites to assess working conditions and construction liabilities.” Spec. 1,11. 5—6. Representative claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated July 23, 2014 (“App. Br.”). Appeal 2015-005335 Application 12/123,711 1. A method for measuring precipitation impact on construction and engineering inspection locations comprising: selecting a particular construction and engineering location, wherein the selected construction and engineering location is the subject of construction and engineering; receiving over a past period of time rainfall information measured specifically in the selected construction and engineering location using geographic information for the selected location with a monitoring system, wherein said monitoring system comprises Doppler radar data; setting the monitoring system with a threshold value for the construction and engineering location; evaluating the previously received rainfall information against the set threshold value; determining whether the previously received rainfall information in the construction and engineering location exceeds the threshold value', and responsive to determining that the previously received rainfall information exceeds the threshold value, transmitting an alert which initiates deployment of an inspector to said construction and engineering location. App. Br. 28 (emphasis added). The claims on appeal stand rejected as follows: (1) claims 1, 5—25, and 27—32 under 35 U.S.C. § 103(a) as unpatentable over Sznaider et al.;1 (2) claim 4 under 35 U.S.C. § 103(a) as unpatentable over Sznaider in view of Moore et al.;2 and 1 US 7,602,285 B2, issued October 13, 2009 (“Sznaider”). 2 US 2009/0326723 Al, published December 31, 2009 (“Moore”). 2 Appeal 2015-005335 Application 12/123,711 (3) claim 26 under 35 U.S.C. § 103(a) as unpatentable over Sznaider in view of Schwoegler.* 3 B. DISCUSSION 1. Claim 1 The method recited in claim 1 includes the steps of (1) selecting a particular construction and engineering location; (2) receiving over a past period of time rainfall information measured specifically in the selected location using geographic information for the selected location with a monitoring system comprising Doppler radar; (3) setting the monitoring system with a threshold value for the location; and (4) determining whether the previously received rainfall information in the location exceeds a threshold value. If the previously received rainfall information exceeds the threshold value, the method includes the step of transmitting an alert. App. Br. 28. Sznaider discloses a weather alert notification system. As for step (1), Sznaider discloses that a subscriber defines the location of the site to be monitored, defines a “radius of influence” around the site to be monitored, and selects from the various weather reporting stations within the “radius of influence.” Sznaider, col. 13,11. 44-48. For example, Sznaider discloses that “the subscriber might select all weather reporting stations within the ‘radius of influence’ and one or more Tier 1 observation sites (typically located at airports) even if they are not located within the radius of influence.” Sznaider, col. 13,11. 50—53. As for step (2), Sznaider discloses that the weather reporting stations collect weather data using Doppler weather radar and other location-based sensors. Sznaider, col. 8,11. 49—51. Thus, we find Sznaider teaches that weather data is 3 US 2004/0010372 Al, published January 15, 2004 (“Schwoegler”). 3 Appeal 2015-005335 Application 12/123,711 measured at the selected location, i.e., a weather reporting station or an observation site. As for steps (3) and (4), Sznaider discloses that the subscriber may define different thresholds for triggering the issuance of an alert message for the different weather reporting stations selected. For example, Sznaider discloses that the system may be set to issue an alert message if wind speeds of 40 miles per hour are detected at one weather reporting station. Sznaider, col. 13,11. 59—64. Sznaider also discloses that the system may detect precipitation dangers. Sznaider, col. 4,11. 13—17. When detecting precipitation dangers, such as rainfall, we find Sznaider teaches that precipitation is measured at the selected weather reporting station or observation site, and if the amount of precipitation at the weather reporting station or observation site exceeds a pre-set threshold value, an alert message is issued. Sznaider discloses that the system routes alert messages to dispatchers and supervisors. Sznaider, col. 10,11. 8—12. Sznaider does not expressly describe the weather reporting stations or observation sites as construction and engineering locations. Nonetheless, we find one of ordinary skill in the art would have recognized that monitoring weather conditions, including rainfall amounts, using Doppler radar would be useful at practically any location, including a construction and engineering location where worker safety is known to be paramount. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Moreover, the Appellant defines a “construction site” as “a location that is the subject of remodeling, construction, engineering, building, design, excavation, structuring, or other physical improvement, modification, or development of an area of land.” Spec. 7,11. 14—17. The Appellant discloses that exemplary 4 Appeal 2015-005335 Application 12/123,711 construction and engineering sites include stretches of road, buildings, and runways. Spec. 7,11. 19—22. We find one of ordinary skill in the art would have understood that an airport, identified as a weather observation site in Sznaider, is often the site of construction and engineering projects, and thus falls within the broad scope of the claimed “construction and engineering location.” The Appellant argues that Sznaider does not disclose that transmission of an alert message initiates deployment of an inspector, or for that matter, a dispatcher or a supervisor, to the construction and engineering location (i.e., the weather reporting station or observation site). App. Br. 14—15; see also App. Br. 16—17, 21-22. The Appellant’s argument is not persuasive because it is not commensurate with the broadest reasonable interpretation of claim 1. Claim 1 recites, in relevant part: determining whether the previously received rainfall information in the construction and engineering location exceeds the threshold value; and responsive to determining that the previously received rainfall information exceeds the threshold value, transmitting an alert which initiates deployment of an inspector to said construction and engineering location. App. Br. 28 (emphasis added). Significantly, the last step of the method, i.e., the transmitting step, is a contingent step. That is, if the previously received rainfall information does not exceed the threshold value, the transmitting step does not occur and the claimed method ends.4 See Ex parte Schulhauser, 2016 BL 173053 (PTAB 2016) 4 The Appellant discloses that “[i]n the event that threshold levels are not reached, or there is no rule indicating that precipitation levels are too high . . . , the construction company may proceed with an unencumbered work day at the whole 5 Appeal 2015-005335 Application 12/123,711 (precedential) (“the broadest reasonable interpretation of claim 1 encompasses an instance in which the method ends when the alarm is triggered in response to the cardiac signal data not being within the threshold electrocardiac criteria”). Thus, we conclude that the transmitting step recited in claim 1 does not narrow the scope of the claimed method.* * 5 Cf. In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) (“[0]ptional elements do not narrow the claim because they can always be omitted.”). For the reasons set forth above, the § 103(a) rejection of claim 1 is affirmed. The Appellant does not present arguments in support of the separate patentability of any of claims 5—25, 27—29, and 32. Therefore, the § 103(a) rejection of claims 5—25, 27—29, and 32 is also affirmed. Our affirmance is based on factual findings and legal conclusions that were not presented in either the Final Office Action or the Examiner’s Answer. Thus, we designate our affirmance a new ground of rejection under 37 C.F.R. § 41.50(b) (2016). 2. Claim 4 Claim 4 depends from claim 1 and recites “wherein the rainfall is measured for a period of time that is at least more than five minutes in the past.” App. Br. 28. The Examiner relies on Moore to establish that varying the time period during which rainfall is measured would have been within the ordinary skill in the art. Final 16.6 construction site or certain loci, as determined based on the evaluated values.” Spec. 15,11. 27—30. That is, no alert is transmitted. 5 Similarly, the transmitting steps recited in claims 27 and 32 are contingent on whether the previously measured precipitation exceeds the threshold value, and thus do not narrow the scope of the claimed methods. 6 Final Office Action dated March 28, 2014. 6 Appeal 2015-005335 Application 12/123,711 The Appellant argues that “Sznaider is understood to project weather events which have not yet occurred at a given location, [and] Moore is understood to collect and report weather data which has already occurred in its respective weather region.” App. Br. 23. The Appellant argues that “these disclosures teach away from each other,” and thus “a combination of Sznaider and Moore would . . . be impermissible under MPEP 2143.01.” App. Br. 23. As discussed above, Sznaider teaches measuring weather conditions, including precipitation amounts, at a selected location, i.e., a weather station or an observation site. Moore also discloses collecting data at a weather station. See Moore 16. Thus, contrary to the Appellant’s argument, Sznaider and Moore do not teach away from each other. The § 103(a) rejection of claim 4 is affirmed. However, we designate our affirmance a new ground of rejection under 37 C.F.R. § 41.50(b) (2016) because claim 4 depends from claim 1. 3. Claim 26 The Appellant does not direct us to any error in the Examiner’s factual findings and legal conclusions in the rejection of claim 26. Rather, the Appellant argues that “Schwoegler fails to overcome the shortcomings of Sznaider” in the rejection of claim 1. App. Br. 24. For the reasons discussed above, there are no shortcomings in the rejection of claim 1 that require curing by Schwoegler. Therefore, the § 103(a) rejection of claim 26 is affirmed. We designate our affirmance a new ground of rejection under 37 C.F.R. § 41.50(b) (2016) because claim 26 depends from claim 1. 4. Claim 31 Similar to claim 1, the Appellant argues that Sznaider does not disclose that transmission of an alert message initiates deployment of an inspector, or for that 7 Appeal 2015-005335 Application 12/123,711 matter, a dispatcher or a supervisor, to the selected construction and engineering location (i.e., the weather reporting station or observation site). App. Br. 19—20. For that reason, the Appellant argues that the rejection of claim 31 is not supported by the cited art. App. Br. 21. Claim 31 recites, in relevant part: A system for measuring precipitation impact on construction and engineering inspection locations comprising: . . . means for transmitting an alert which initiates deployment of an inspector to said geographic location in response to determining that the previously received rainfall information exceeds the threshold value. App. Br. 34—35 (emphasis added). Using the term “means” in a claim limitation creates a presumption that 35 U.S.C. § 112, sixth paragraph, applies. Personalized Media Commc’ns, LLCv. Inti Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998). The plain and unambiguous meaning of paragraph six is that one construing means-plus-function language in a claim must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure. In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). According to the Appellant’s Specification: As used herein, an “alert” encompasses any communication or notification between two or more parties (i.e., humans), at least one system and at least one party, or two systems. The alert may be transmitted through any method of communications understood by one skilled in the art, including, for example, an audible signal (e.g., a siren), a voice call, SMS, MMS, cellular, GSM, CDMA, Wi-Fi, Wi- Max, wireless transmission, the Internet, LAN, WAN, email, and any other electronic tone, pulse, or packet transmitted via wired or wireless paths or combinations thereof. The alert is in real-time or substantially in real-time in preferred embodiments. 8 Appeal 2015-005335 Application 12/123,711 Spec. 10,11. 22—29 (emphasis added); see also Spec. 15,11. 17—20 (“For example, an alert, such as an email or short message service (SMS). . . may be provided such that inspectors are deployed to sub-sites determined to have precipitation levels exceeding the threshold level. . . .”). Based on the foregoing, we interpret the “means for transmitting an alert which initiates deployment of an inspector to said geographic location in response to determining that the previously received rainfall information exceeds the threshold value” to include a communication or notification between two systems transmitted through LAN or WAN. Sznaider discloses that weather data is received, via satellite, by two separate file servers 21 and 22. Sznaider, col. 5,11. 28—29. File server 22 and desks 15, 16, and 17, located at a business headquarters, are all interconnected as part of a local area or wide area network (LAN/WAN). Sznaider, col. 5,11. 44—52. Messages generated by an Alert Distribution software module are forwarded to the file server 22 and from there, file server 22 delivers the messages to the appropriate desk (i.e., desk 15, 16, and/or 17). Sznaider, col. 7,11. 37-42. We find that the alert disclosed in Sznaider is a communication between two systems transmitted through LAN/WAN, and thus falls within the scope of the claimed “means for transmitting an alert” recited in claim 31. The § 103(a) rejection of claim 31 is affirmed. Our affirmance is based on factual findings and legal conclusions that were not presented in either the Final Office Action or the Examiner’s Answer. Therefore, we designate our affirmance a new ground of rejection under 37 C.F.R. § 41.50(b) (2016). 5. Claim 30 Claim 30 recites, in relevant part: An article of manufacture comprising: . . . 9 Appeal 2015-005335 Application 12/123,711 a processing system configured and adapted . . . to accept input of.... a determination of whether the previously measured precipitation at the construction and engineering location exceeds the threshold value; and providing an alert which initiates deployment of an inspector to said construction and engineering location in response to determining that the previously received rainfall information exceeds the threshold value. App. Br. 33—34 (emphasis added). The Appellant argues that the processing system recited in claim 30 “is further arranged for, providing an alert which initiates deployment of an inspector to said construction and engineering location in response to determining that the previously received rainfall information exceeds the threshold value.” App. Br. 6. Significantly, claim 30 does not recite that the processing system is arranged for “providing an alert” as argued by the Appellant. See App. Br. 6. Rather, claim 30 recites that a processing system is “configured and adapted ... to accept input of.. . providing an alert which initiates deployment of an inspector to said construction and engineering location.” App. Br. 33—34 (emphasis added). It is unclear how a processing system can be configured and adapted to accept input of “providing an alert.” For that reason, we conclude that claim 30 is indefinite. Thus, we enter a new ground of rejection of claim 30 under 35 U.S.C. § 112, second paragraph. As for the § 103(a) rejection of claim 30, speculation and assumptions would be required to determine whether the article recited in claim 30 is rendered obvious by Sznaider because, as discussed above, the configuration of the processing system is unclear. Speculation and assumptions, however, are not proper in a prior art rejection. See In re Steele, 305 F.2d 859, 862—63 (CCPA 1962) (reversing prior 10 Appeal 2015-005335 Application 12/123,711 art rejection because rejection was based on speculation as to the meaning of claim terms and assumptions as to claim scope). Therefore, the § 103(a) rejection of claim 30 is reversed. We emphasis that our reversal is not a reversal based on the merits of the rejection but rather is a procedural reversal predicated upon the indefmiteness of claim 30. C. DECISION Claims 1 and 4—32 stand rejected as follows: (1) The rejection of claims 1, 5—25, 27—29, 31, and 32 under 35 U.S.C. § 103(a) as unpatentable over Sznaider is affirmed and designated a new ground of rejection under 37 C.F.R. § 41.50(b) (2016). (2) The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Sznaider in view of Moore is affirmed and designated a new ground of rejection under 37 C.F.R. § 41.50(b) (2016). (3) The rejection of claim 26 under 35 U.S.C. § 103(a) as unpatentable over Sznaider in view of Schwoegler is affirmed and designated a new ground of rejection under 37 C.F.R. § 41.50(b) (2016). (4) Claim 30 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite, and is designated a new ground of rejection under 37 C.F.R. § 41.50(b) (2016). The rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable over Sznaider is reversed. This Decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: 11 Appeal 2015-005335 Application 12/123,711 When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01 (8th ed., Rev. 9, Aug. 2012). 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; 37 C.F.R, $ 41.50(b) 12 Copy with citationCopy as parenthetical citation