Ex Parte JannardDownload PDFPatent Trial and Appeal BoardOct 27, 201713935724 (P.T.A.B. Oct. 27, 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. 13/935,724 07/05/2013 James H. Jannard 3408.0440001 9457 150261 7590 10/31/2017 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER AMADIZ, RODNEY ART UNIT PAPER NUMBER 2694 NOTIFICATION DATE DELIVERY MODE 10/31/2017 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): e-office @ skgf.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES H. JANNARD Appeal 2017-006382 Application 13/935,724 Technology Center 2600 Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and ADAM J. PYONIN, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-006382 Application 13/935,724 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 21—23, 41, and 47, which constitute all the claims pending in this application.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION Appellant’s claimed invention is directed to “data management system” in communication with a “user interface” that “may comprise a wearable support, such as an eyeglass frame, adapted to carry one or more of speakers, microphone and video display” (Abstract). Independent claim 21, reproduced below, is representative of the subject matter on appeal: 21. A wearable electronically enabled interface system for providing audio and/or video input to a wearer from at least two sources, comprising: an eyeglass frame having no lenses; a microphone configured to receive voice commands from the wearer; an electronics module configured to simultaneously receive communications from multiple electronic input sources, wherein the communications include wireless communications received and transmitted over multiple networks via multiple transceivers; a sensor configured to measure acceleration; a speaker for providing audio output to the wearer; 1 Claims 24—26, 28—30, 32-40, 42-46, and 48—50 were canceled in an Amendment submitted with the Reply. Reply Br. 1. 2 Appeal 2017-006382 Application 13/935,724 a screen configured to display video images to the wearer; and a selector configured to switch between a first audio or video input to the wearer and a second audio or video input to the wearer. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Spitzer ’546 Blum et al. Spitzer et al. Ibrahim et al. Reshefsky Nelis Yeh US 6,091,546 US 2003/0058406 Al US 2004/0212776 Al US 2004/0240404 Al US 6,873,862 B2 US 2005/0248722 Al US 2006/0109350 Al July 18,2000 Mar. 27, 2003 Oct. 28, 2004 Dec. 2, 2004 Mar. 29, 2005 Nov. 10, 2005 May 25, 2006 THE REJECTIONS The Examiner made the following rejections: Claims 21 and 47 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Spitzer, in view of Nelis, Ibrahim, Yeh, and Blum. Final Act. 2—3. Claims 23 and 41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Spitzer, in view of Nelis, Ibrahim, Yeh, Blum, and Spitzer ’546. Final Act. 5. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Spitzer, in view of Nelis, Ibrahim, Yeh, Blum, and Reshefsky. Final Act. 6. 3 Appeal 2017-006382 Application 13/935,724 ISSUES The issues are whether the Examiner erred in finding: 1. Spitzer and Ibrahim combinable as analogous art; and 2. motivation with a rational underpinning to combine Ibrahim with Spitzer. ANALYSIS We adopt the Examiner’s findings in the Answer and Final Office Action and we add the following primarily for emphasis. We note that if Appellants failed to present arguments on a particular rejection, we will not unilaterally review those uncontested aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313—14 (Fed. Cir. 2008) (The Board may treat arguments Appellant failed to make for a given ground of rejection as waived). 1. Analogous Art Appellant argues the Examiner erred in combining the references because “Ibrahim is not analogous art to the invention of Claim 21” (App. Br. 12). Particularly, Appellant contends “Ibrahim is not in the same field of endeavor as the invention of Claim 21 because Ibrahim is not directed to wearable devices providing a user-oriented suite of functionality” (App. Br. 13) and “Ibrahim is not reasonably pertinent to the problem faced by the inventor of Claim 21 because Ibrahim is not directed to the management and selection of an input source from multiple active input sources for consumption by a user” (App. Br. 16); Appellant further notes that under a recent Federal Circuit case regarding whether a reference is reasonably 4 Appeal 2017-006382 Application 13/935,724 pertinent, “the question is whether an inventor would look to this particular art to solve the particular problem at hand” (App. Br. 16, quoting Circuit Check Inc. v. QXQ, Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (emphasis added)). We are not persuaded of Examiner error. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor as the claims, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A. Field of Endeavor To determine the invention’s field of endeavor, we consider the “explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted). Although Appellant argues the wearability of the claimed invention provides both functional and structural differences from Ibrahim (see App. Br. 13—15), we note that Claim 21 does not require the electronics module that transmits and receives wireless communications itself to be placed inside the eyeglass frame. The disclosure additionally indicates that in one embodiment, “the wearable electronic interface 601 is any electronic device that may be worn by a wearer” (Spec. 1207). As the claimed invention is “configured to simultaneously receive communications” from “wireless communications received and transmitted” (Claim 21), whose functions are performed by electronic components, we find the field of 5 Appeal 2017-006382 Application 13/935,724 endeavor to be wireless communications. Similarly, we find Ibrahim’s field of endeavor to be wireless communications, as Ibrahim “relates generally to wireless communication” (Ibrahim 12). B. Reasonably Pertinent to the Particular Problem The Examiner finds, and we agree, that Ibrahim is “pertinent to the particular problem with which the application is concerned,” which is a system having a device that simultaneously receives communication from multiple electronic input sources (See Claim 21, lines 5-6). Ibrahim is analogous in that it is directed to solving the same exact problem of having a device (Fig. 2 at 18-32) simultaneously receive communication from multiple electronic input sources (Ans. 3, citing Ibrahim Fig. 2, #63 and #65, and 148). With respect to the Examiner’s findings reproduced above, Ibrahim explicitly teaches that “the wireless communication device of FIG. 2 may be implemented using one or more integrated circuits” (Ibrahim 136) and the “external device[s]” may use a Bluetooth or IEEE 802.11 interface and may be a “headset” (Ibrahim 127; see Final Act. 4). Thus one of ordinary skill in the art would look to this particular art to solve Appellant’s particular problem(s), because this art teaches “better management of input signals from multiple data sources” (App. Br. 16, citing Spec. H 7—10) using miniature elements such as integrated circuits, and further relates to wearable devices such as headsets. Accordingly, Appellant’s arguments do not persuade us the Examiner erred in finding Ibrahim as analogous art. 2. Motivation to Combine 6 Appeal 2017-006382 Application 13/935,724 Appellant argues the Examiner erred, because “[a] person of ordinary skill in the art would not have been motivated to combine the teachings of Ibrahim, which are directed to the implementation of algorithms to a network of computers, with those of Spitzer ’776, which are directed primarily to mechanical structures” (App. Br. 17). Appellant contends that because Spitzer is “not concerned or related to peer [to] peer wireless interfaces,” that Spitzer “would provide no motivation for a person of ordinary skill in the art to modify the device to incorporate multiple input sources, let alone modify Spitzer ’776 based on the teachings of Ibrahim” (App. Br. 18). We are not persuaded of Examiner error. The Examiner finds, and we agree, that Ibrahim was used to teach that it is well-known to simultaneously communicate with multiple input sources. The teaching of simultaneous communication with multiple input sources was then applied to enhance Spitzer’s electronic module thereby allowing simultaneous wireless communication with multiple input sources (Ans. 5). Thus, contrary to Appellant’s contention, the Examiner provides a rational underpinning to support the legal conclusion of obviousness. See KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Such an enhancement additionally flows from Ibrahim’s acknowledgment that “the use of wireless communication devices” is “increasing] ” (Ibrahim 17). Appellant finally argues that “Ibrahim is intended to allow simultaneous communication with multiple input devices,” and thus teaches away from “[incorporation of a selector configured to switch between inputs to provide only a single input to the wearer” (Reply Br. 6). A 7 Appeal 2017-006382 Application 13/935,724 reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant has not shown that Ibrahim discourages investigation into the invention claimed. One skilled in the art would understand that the reception of simultaneous communications in no way discourages selection of one of the communications, as the two concepts are not mutually exclusive. Accordingly, we sustain the Examiner’s rejection of independent claim 21, and claims 22, 23 and 41 not separately argued with particularity (see App. Br. 20-21), and claim 47 not separately argued. See App. Br. 10. CONCLUSION The Examiner did not err in finding: 1. Spitzer and Ibrahim combinable as analogous art; and 2. motivation with a rational underpinning to combine Ibrahim with Spitzer. DECISION The Examiner’s decision rejecting claims 21—23, 41, and 47 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 8 Copy with citationCopy as parenthetical citation