Ex Parte Fan et al

Patent Trial and Appeal BoardAug 27, 2014

11847017 (P.T.A.B. Aug. 27, 2014)

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. 11/847,017 08/29/2007 James Fan 7785-0708 (2007-0268) 1441 92384 7590 08/27/2014 AT&T Legal Department - G&G Attention: Patent Docketing Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER SALCE, JASON P ART UNIT PAPER NUMBER 2421 MAIL DATE DELIVERY MODE 08/27/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JAMES FAN and JENNIFER K. LAM ____________________ Appeal 2012-002674 Application 11/847,017 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY, III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002674 Application 11/847,017 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. A. INVENTION According to Appellants, the invention generally relates to an emergency alert system (Spec. ¶ 1). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A customer premises device comprising: a decoder configured to decode television programming information for transmission to a display device coupled to the customer premises device; a receiving module configured to receive an Internet protocol emergency alert system message; a visual module in communication with the receiving module, the visual module configured to provide a visual alarm separate from the display device based on the Internet protocol emergency alert system message, the visual alarm including blinking a light on the customer premises device; and an audible module in communication with the receiving module, the audible module configured to provide an audible alarm separate from the display device based on the Internet protocol emergency alert system message. C. REJECTION The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Chen US 6,553,100 B1 Apr. 22, 2003 Kendall US 2005/0273809 A1 Dec. 8, 2005 Hasek US 7,592,912 B2 Sept. 22, 2009 Gurley US 7,784,072 B2 Aug. 24, 2010 Appeal 2012-002674 Application 11/847,017 3 Claims 1–7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hasek, Gurley, and Kendall. Claims 8, 9, 11, and 13–20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hasek and Gurley. Claims 10 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hasek, Gurley, and Chen. II. ISSUE The principal issue before us is whether the Examiner has erred in finding the combination of Hasek and Gurley would have taught or suggested “a visual module … configured to provide a visual alarm separate from the display device …” and “an audio module … configured to provide an audible alarm separate from the display device …” (claim 1, emphases added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Hasek 1. Hasek is directed to an emergency alert data (e.g., EAS messages) delivery apparatus that provides emergency alert data to subscribers of an Internet protocol television (IPTV) (Abstract), wherein content is delivered over the packet-switched network for emergency alert function (col. 12, ll. 23–25). Gurley 2. Gurley discloses an apparatus that provides emergency alert signals indicating an emergency event (Abstract), wherein alert outputs may Appeal 2012-002674 Application 11/847,017 4 be aural (such as a warning tone and/or an audio message) and/or visual (via a display or light) in nature (col. 7, l. 67 to col. 8, l. 7). 3. The receiver may be set-top boxes, computers or other apparatuses that may not include a display device (col. 10, ll. 9–17). IV. ANALYSIS Claims 1–7 Appellants contend, although the Examiner finds “Hasek does not describe either of the visual or audible alarms” and “suggests modifying Hasek based on the purported teachings of Gurley and Kendall,” “Hasek teaches away from the suggested modification” (Br. 6). Appellants argue “[a]n objective of Hasek is to provide the EAS message with minimal change to the existing system” (Br. 7) and thus such modification “defeats an objective of Hasek because it fails to ‘leverage[] the installed infrastructure as much as possible’” and the suggested modification “would require new hardware components” (Br. 8). However, the Examiner finds “Hasek teaches a client application for receiving, decoding, and displaying emergency alert data” (Ans. 14). The Examiner also finds “Gurley teaches blinking a light on the client device… and producing an aural output from a speaker in response to receiving emergency alert data,” but “does not change the infrastructure for delivering emergency alert data” which “may be compatible with Hasek’s network” (Ans. 15). The Examiner explains “Hasek merely teaches a benefit of the simplicity in the implementation of his invention, but does not discourage adding additional features to his invention” (id.) We give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. Appeal 2012-002674 Application 11/847,017 5 1997). At the outset, although Appellants argue “features of claim 1” include “a visual alarm” and “an audible alarm” (Br. 8), we note that claim 1 does not positively recite any such “visual alarm” or “audible alarm.” Instead, claim 1 is merely directed to a “device” (i.e., apparatus) that comprises “a visual module” that is “configured to” (i.e., intended to) perform a function of “provide a visual alarm” and “an audio module” that is “configured to” (i.e., intended to) perform a function of “provide an audio alarm” (claim 1). We conclude the “configured to provide” function of the respective module is directed to functional language that does not further limit the structure of the claimed system. (Claim 1). In particular, we observe Appellants’ Figure 6 merely depicts Visual Module 606 as a box, with no detail provided as to specific software (and supporting algorithm) and/or hardware components required to perform the claimed functional language the module is "configured to" perform. (Claim 1). Paragraph 46 of the Specification indicates “visual module 606 preferably produces the visual alarm by making the power-on light 324 (FIG. 2) blink repeatedly for the pre-set amount of time.” Again, no detail is provided as to specific software or hardware components required to perform the blinking function described in the Specification and also recited in claim 1. (Claim 1, “blinking a light on the customer premises device”). Thus, we find the claimed “visual module” is described in the Specification merely in terms of the function it is intended to perform (“configured to provide a visual alarm separate from the display device,” as recited in claim 1). Appellants have not established that “visual module” is a term which has achieved recognition in the art as a noun phrase denoting structure. Therefore, if the “visual module” element is not a “means” to Appeal 2012-002674 Application 11/847,017 6 which § 112, sixth paragraph is applicable, then it is simply an element defined solely by the claimed function to be performed (i.e., a purely functional element unlimited by any particular structure). We additionally note the claimed “audible alarm” is also depicted merely as a box (Fig. 6, “Audible Module 604”), with no detail provided as to specific software (and supporting algorithm) and/or hardware components required to perform the claimed functional language (“configured to provide an audible alarm,” as recited in claim 1). 1 Moreover, our reviewing court guides that the patentability of an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also Superior Industries, Inc. v. Masaba, Inc., Appeal No. 2013-1302, 2014 WL 163046 at *5 (Fed. Cir. 2014) (Rader, J., concurring) (“[A] system claim generally covers what the system is, not what the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (‘The 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’) and In re Schreiber, 128 F.3d 1473, 1431–32 (Fed. Cir. 1997). Thus, it is usually improper to construe non-structural claim terms in apparatus/device claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 1 In the event of further prosecution, we leave it to the Examiner to determine whether at least independent claim 1 is unpatentable under 35 U.S.C. § 112, first paragraph, for lack of an enabling disclosure commensurate with the scope of the claim. Appeal 2012-002674 Application 11/847,017 7 F.3d 1075, 1091 (Fed. Cir. 2009)”). 2 Accordingly, giving the claim its broadest reasonable interpretation, we conclude claim 1 merely requires a “device” that comprises “a visual module” and “an audible module” in communication with a receiving module. Nevertheless, we find no error with the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. Hasek discloses delivering an emergency alert (FF 1). We agree with the Examiner’s finding that “Hasek teaches a client application for receiving, decoding, and displaying emergency alert data” (Ans. 14). In addition, Gurley discloses an apparatus that provides emergency alert signals that is both audio and visual (FF 2), wherein the receiver is a set-top box separate from the display device (FF 3). We also agree with the Examiner’s finding “Gurley teaches blinking a light on the client device … and producing an aural output from a speaker in response to receiving emergency alert data” (Ans. 15). Accordingly, we find no error with the Examiner’s finding that Hasek in view of Gurley would have taught or at least suggested “a visual module” configured to “provide a visual alarm separate from the display device” and “an audio module” configured to provide “an audible alarm separate from the display device,” as recited in claim 1. Though Appellants also contend “Hasek teaches away from the suggested modification” (Br. 6), our reviewing court has held “‘[a] reference may be said to teach away when a person of ordinary skill, upon 2 Superior Industries, Inc. v. Masaba, Inc., 2014 WL 163046 at *5 is a non- precedential opinion of the Court of Appeals for the Federal Circuit. However, we consider the concurring opinion by Chief Judge Rader as guiding because it cites precedential authority in support. Appeal 2012-002674 Application 11/847,017 8 [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.’” Para-Ordnance Mfg., Inc. v. SGS Importers Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Appellants have not identified persuasive support for a direction divergent from the claimed invention since we do not find that the disclosure in Gurley of providing emergency alert signals that is both audio and visual separate from a display device would discourage one skilled in the art from providing both audio and visual signal in the system for providing emergency alert signals of Hasek. The issue we address here is not whether one of ordinary skill in the art would have opted for a modification “with minimal change to the existing system” (Br. 7), or a modification that would “leverage[] the installed infrastructure as much as possible” (Br. 8), or whether the skilled artisan would have been discouraged from modifications that “would require new hardware components” (Br. 8), as Appellants contend. Rather, the issue is whether a person of ordinary skill, upon reading Gurley and Hasek, would have been led in a direction divergent from the path that was taken by Appellants. We find that Gurley and Hasek are in the same field of endeavor as that of Appellants, of providing emergency data in an emergency alert system. Thus, we see no error with the Examiner’s proffered combination of the teachings of Gurley with those of Hasek. The Supreme Court guides “[t]he combination of familiar elements according to known methods is Appeal 2012-002674 Application 11/847,017 9 likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We find no error in the Examiner’s proffered motivation that it would have been obvious to combine Gurley’s teaching of providing both audio and visual emergency alert signals that are separate from a display device to the system for providing emergency alert signals of Hasek. Therefore, on this record, we are in accord with the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness regarding claim 1. Accordingly, we find no error in the Examiner’s rejection of claim 1 and claims 2–7 depending therefrom but not argued separately (Br. 9) under 35 U.S.C. § 103(a) over Hasek and Gurley in further view of Kendall. Appellants repeat the argument “Hasek teaches away from these claimed features” with respect to independent claims 8 and 14 and claims 9, 11, 13, and 15–20 depending respectively therefrom (Br. 9–10), and with respect to claims 10 and 12 (Br. 10). However, as discussed above, we are in accord with the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness of the claimed invention over Hasek and Gurley. Accordingly, we also find no error in the Examiner’s rejection of claims 8, 9, 11, and 13–20 over Hasek and Gurley, and of claims 10 and 12 over Hasek and Gurley in further view of Chen. V. CONCLUSION AND DECISION The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 103(a) is affirmed. Appeal 2012-002674 Application 11/847,017 10 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 kis