Ex Parte Curry

Patent Trial and Appeal Board

May 15, 2017

12123711 (P.T.A.B. May. 15, 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.
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”).
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(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”).
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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
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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
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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.
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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
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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.
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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: . . .
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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
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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:
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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)
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