UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/585,224 12/30/2014 Kevin Charles Peterson
16621 7590 06/29/2018
Morris & Kamlay LLP / 030120
1911 N. Fort Myer Drive
Suite 1050
Arlington, VA 22209
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
030120-201310US 4750
EXAMINER
FOXX, CHICO A
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
pto@morriskamlay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN CHARLES PETERSON and
ANTHONY MICHAEL F ADELL
Appeal2018-000925
Application 14/585,224
Technology Center 2600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-21, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b) (2016).
1 Appellants identify the real party in interest as Google Inc. Br. 1. Google
Inc. is the Applicant for the instant patent application. See Bib. Data Sheet.
Appeal2018-000925
Application 14/585,224
STATEMENT OF THE CASE
Appellants' disclosed invention relates to security zones existing
"within a single premise, each having a different mode at a given time. A
change detected ... in the mode of the one security zone may automatically
change the mode of the other security zone .... " Spec. ,r 21. Claim 1,
which is illustrative, reads as follows:
1. A system, comprising:
a controller;
a first security system configured to provide security for
premises, to be controlled by the controller, and having a first
mode and a second mode, wherein the first mode defines a first
response to an event and the second mode defines a second
response to the event that differs from the first response; and
a second security system configured to provide security
for at least one of a part of a room within the premises or a storage
compartment within the premises, configured to be controlled by
the controller, having a sensor, and having a third mode and a
fourth mode, wherein the controller is configured to place the
second security system in the third mode in response to a
determination that the first security system is in the first mode.
Claims 1--4, 7-11, and 14--21 stand rejected under 35 U.S.C. § 103 2 as
being unpatentable over Hovang (EP 2,698,773 Al, published Feb. 19,
2014). See Final Act. 3-13.
Claims 6 and 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hovang and Poder (US 2012/0169487 Al, published July
5, 2012). See Final Act. 13-15.
2 All rejections are under the provisions of 35 U.S.C. in effect after the
effective date of the Leahy-Smith America Invents Act of20I 1 (AIA). See
Final Act. 2.
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Claims 5 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hovang and Hisano et al. (US 7,012,524 B2, published
Mar. 14, 2006). See Final Act. 15-16.
Rather than repeat the arguments here, we refer to the Appeal Brief
("Br." filed Mar. 23, 2017) for the positions of Appellants; the Final Office
Action ("Final Act." mailed Sept. 21, 2016) and Examiner's Answer ("Ans."
mailed July 20, 2017) for the reasoning, findings, and conclusions of the
Examiner; and the Specification ("Spec." filed Dec. 30, 2014). Only those
arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
ISSUES
The issues presented by Appellants' arguments are as follows:
Does the Examiner err in finding Hovang teaches or suggests "a first
security system ... having a first mode and a second mode ... ; and a
second security system ... having a third mode and a fourth mode"
(hereinafter the "mode limitation"), as recited in claim 1?
Does the Examiner err in finding Hovang teaches or suggests
"[placing] the second security system in the third mode in response to a
determination that the first security system is in the first mode" (hereinafter
the "response limitation of claim 1 "), as recited in claim 1?
Does the Examiner err in finding Hovang teaches or suggests "placing
... the second security system into the fourth mode in response to a
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determination that the first security system is in the second mode"
(hereinafter the "response limitation of claim 7"), as recited in claim 7?
Does the Examiner err in finding Hovang teaches or suggests
"[placing] the second security system in the fourth mode in response to a
determination that the first security system is in the second mode," as recited
in claim 14?
ANALYSIS
CLAIMS 1---6 AND 16-21
The Mode Limitation
The Examiner finds Hovang teaches the mode limitation. In
accordance with the Examiner's mapping, Hovang's first security system
(first group of detectors and associated control logic) having a "first mode"
( armed home mode) and a "second mode" ( armed away mode), and
Hovang' s second security system ( second group of detectors and associated
control logic) having a "third mode" ( armed mode) and a "fourth mode"
( disarmed mode). Final Act. 3 ( citing Hovang ,r 9); Ans. 3--4 ( additionally
citing Hovang ,r,r 23-24; Figs. 1-2).
Appellants argue the Examiner's interpretation of the term "mode" to
mean a condition of a group of detectors as taught by Hovang, such as being
armed or disarmed, is inconsistent with (1) "the use of the claim term in the
specification and drawings" of the present application, Br. 6 ( quoting
MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2111.0l(III) (9th ed.
Rev. 08.2017, Jan. 2018)); (2) Hovang's use of the term "mode" as referring
to a state of an entire alarm system, id. at 6-8 ( citing Hovang, Abstract;
,r,r 9-10, 25-27); and (3) Poder's and Hisano's use of the term "mode,"
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which is consistent with the use of the term in Hovang, id. 9-10 ( citing
Poder ,r,r 49, 61, 75, 77, 79; Hisano 3:64--4:29, 6:46-7:33, 7:62-8:36, 8:38-
9:15, 9:16-13:67).
We begin by construing the term "mode" in claim 1. Claim
construction is an issue of law that is reviewable de nova. Cordis Corp. v.
Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009). To this end,
we give claims their broadest reasonable interpretation consistent with the
Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). The meaning of a claim term may be determined by
reviewing a variety of sources including the claims themselves, dictionaries
and treatises, and the written description, the drawings, and the prosecution
history. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294,
1298 (Fed. Cir. 2003).
Appellants' Specification does not define the term "mode," but does
note a home security system has an "away" mode when occupants are away,
and a "home" mode when occupants are home. Spec. ,r 1. According to
Appellants' Specification, "[s]uch modes can apply to the security system
for the whole home." Id. Our emphasis underscores that these forms of
modes are merely exemplary, and so although this description informs our
construction of the term "mode," it does not limit our interpretation.
"Prior art references may be 'indicative of what all those skilled in the
art generally believe a certain term means ... [ and] can often help to
demonstrate how a disputed term is used by those skilled in the art."' In re
Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). Contrary to Appellants'
arguments (Br. 6-10), however, we find no evidence that the term "mode,"
as a term of art, is necessarily limited to a state of an entire alarm system.
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And even assuming the Examiner's finding that Hovang teaches the term
"mode" is different than Hovang's explicit use of the term "mode," it is not
necessary for Hovang to use identical language to describe structures or acts
disclosed therein in order to consider claim limitations satisfied by those
structures or acts. See In re Neugebauer, 330 F. 2d 353, 356 n. 4 (CCPA
1964) ("In the construction of words, not the mere words, but the thing and
the meaning, are to be inquired after.").
Thus, under its broadest reasonable interpretation consistent with
Appellants' Specification and the prior art references of record from
analogous art, we interpret the term "mode" with its plain meaning, namely
a particular functioning arrangement. See MERRIAM-WEBSTER'S
COLLEGIATE DICTIONARY 747 (n. def. 6b: "a particular functioning
arrangement or condition : STATUS ...
.") (10th ed. 1993).
With this construction, we see no error in the Examiner's finding that
Hovang teaches the mode limitation. Hovang's alarm system
can be set in a ... a first armed mode, in which the first group of
detectors is armed and the second group of detectors is disarmed,
and a second armed mode, in which the first and second groups
of detectors are armed ....
The first armed mode can be a so called armed home mode
. . . . The second armed mode can be a so called armed away
mode.
Hovang ,r,r 9-10. Hovang' s armed home mode arms a first group of
detectors and disarms a second group of detectors. Hovang's first group of
detectors, then, have a first particular functioning arrangement involving the
first group of detectors armed and the second group of detectors disarmed in
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Application 14/585,224
the armed home mode (the recited "first mode"). Hovang's armed away
mode arms both the first group of detectors and the second group of
detectors. Hovang's first group of detectors, then, have a second particular
functioning arrangement involving both the first and second group of
detectors armed in the armed away mode (the recited "second mode").
Moreover, Hovang's second group of detectors have (1) a third particular
functioning arrangement involving the second group of detectors armed (the
recited "third mode"), and (2) a fourth particular functioning arrangement
involving the second group of detectors disarmed (the recited "fourth
mode"). Thus, Hovang teaches the mode limitation.
The Response Limitation of Claim 1
Nor do we see error in the Examiner's finding that Hovang teaches the
response limitation. According to the Examiner, Hovang's second group of
detectors are placed in the armed mode in response to a determination that
the first group of detectors are in the armed home mode and triggered. Final
Act. 4--5 (citing Hovang ,r 11; Fig. 3); Ans. 6-7. We note that the claim
does not limit how the recited determination is made. Hovang's alarm
system, "in the [armed home mode,] is arranged for triggering an alarm and
automatically arming or activating the second group of detectors when a
detector of said first group of detectors is triggered." Hovang ,r 9. In short,
contrary to Appellants' argument (Br. 13), but for Hovang's first group of
detectors being in the armed home mode (the "First armed mode" in
Hovang's Fig. 3 (reproduced below)), the second group of detectors would
not be armed (the recited "third mode") in response to the triggering of the
first group of detectors.
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Conclusion
Appellants do not persuade us of error in the rejection of claim 1.
Accordingly, we sustain the rejection of (1) independent claim 1;
(2) independent claims 16 and 19, which are argued relying on the
arguments made for claim 1 (see Br. 10-11 ); and (3) claims 2---6, 17, 18, 20,
and 21, which depend, directly or indirectly, from claims 1, 16, and 19,
respectively, and were not separately argued with particularity (see id. at
11).
CLAIMS 7-13 AND 15
We do not sustain the Examiner's obviousness rejection of
independent claim 7, which recites, in pertinent part, placing a second
security system into a fourth mode in response to a determination a first
security system is in a second mode. Final Act. 6-8. Similar to the findings
of claim 1, the Examiner finds Hovang teaches ( 1) a first security system
( first group of detectors) having a first mode ( armed home mode) and a
second mode (armed away mode); and (2) a second security system (second
group of detectors). Id. at 6-7. The Examiner further finds Hovang's Figure
3 illustrates the second group of detectors having a fourth mode ( disarmed
mode). Id. at 8. The Examiner concludes as follows:
if the system is set from the second mode to the armed home
mode/first mode it would have been obvious to one of ordinary
skill in the art at the time of the effective filing date of the
claimed invention to configure the controller to place the second
security system to the fourth mode when switching to the first
mode, based on the controller understanding that the second
security system normal operates in the third mode while in the
second mode, however when the system is initially operated in
the first mode the second group of detectors are in the disarm
mode/fourth mode and would need for the controller place them
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Application 14/585,224
Id.
in the fourth mode when being switched into the first armed
mode/first mode, according to the flow chart of Fig. 3.
We find the Examiner's conclusion problematic. Hovang's Figure 3
is reproduced below:
-------- ---·--1
i
/.\lan11 signal
qn::.1t:p of
(~etectors
[ -~:~E:·J-td~gered
i
--···-··I····----
Activate image
capt.udn9
de,l!ce
l_
Send irrmg,~
--- information _ __]
r. ------------- ---------~] ! Send image
~ infonna1:k>n L ___ _
Figure 3 illustrates a second embodiment of Hovang's alarm system.
As with claim 1, the Examiner maps the recited first mode to
Hovang's armed home mode ("First armed mode" (Fig. 3)), the recited
second mode to Hovang's armed away mode, ("Second armed mode" (Fig.
3)), the recited third mode to Hovang's second group of detectors armed,
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Application 14/585,224
and the recited fourth mode to Hovang's second group of detectors
disarmed. See Final Act. 6-8. However, claim 7 recites "placing ... the
second security system into the fourth mode in response to a determination
that the first security system is in the second mode" ( emphasis added). As
illustrated in Figure 3, Hovang places the second group of detectors into the
armed mode in response to the first security system being in the armed away
mode, i.e., the second mode. The Examiner maps the fourth mode to
Hovang's second group of detectors being in the disarmed mode, not the
armed mode. To the extent the Examiner is relying on a transition from the
second mode to the first mode, we note that the claim uses the present tense
"is" rather than the past tense "was." We find the rejection, as mapped by
the Examiner, is inconsistent with the plain language of claim 7.
Accordingly, on this record we do not sustain the rejections of
(1) claim 7; and (2) claims 8-13 and 15, which directly depend from claim
7. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) ("Dependent claims
are nonobvious under section 103 if the independent claims from which they
depend are nonobvious.") Because this issue is dispositive regarding the
Examiner's rejection of these claims, we need not address Appellants' other
arguments.
CLAIM 14
We do not sustain the Examiner's obviousness rejection of claim 14
(Final Act. 27-30), which depends from claim 1, and recites, in pertinent
part, placing a second security system in a fourth mode in response to a
determination that a first security system is in a second mode.
In rejecting claim 14, the Examiner makes similar findings and
conclusions to those discussed above concerning claim 7 ( compare Final
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Application 14/585,224
Act. 9, with id. at 9-10}-findings and conclusions we find problematic on
this record.
Accordingly, we agree with Appellants the rejection of claim 14 is
improper (Br. 13) and do not sustain the Examiner's rejection of claim 14.
Because this issue is dispositive regarding the Examiner's rejection of this
claim, we need not address Appellants' other arguments.
NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 1, 7, and 14 under
35 U.S.C. § 103 as being unpatentable over Hovang pursuant to our
authority under 37 C.F.R. § 41.50(b). We adopt as our own the Examiner's
findings regarding claims 1, 7, 16, and 19 except for the mapping of the
recited first, second, third, and fourth modes to Hovang's modes.
Claim 1
Regarding independent claim 1, Hovang's armed home mode, ("First
armed mode" (Fig. 3)), arms a first group of detectors and disarms a second
group of detectors. Hovang ,r,r 26-27. Hovang's armed home mode, then,
teaches the first group of detectors and the associated control logic (the
recited "first security system") armed and functioning as illustrated in the
left half of Hovang's Figure 3 (the recited "first mode"), i.e., when a detector
of the first group of detectors is triggered an alarm signal is activated and the
second group of detectors is armed. Further, in Hovang's armed home mode
the second group of detectors and associated control logic (the recited
"second security system") is disarmed (the recited "third mode").
Hovang's armed away mode, ("Second armed mode" (Fig. 3)), arms
the first group of detectors and associated control logic and arms a second
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Application 14/585,224
group of detectors. Hovang ,r 9. Hovang's armed away mode, then, teaches
the first group of detectors and the associated control logic armed and
functioning as illustrated in the right half of Hovang's Figure 3 (the recited
"second mode"), i.e., when a detector of the first group of detectors is
triggered an alarm signal and an image capture device are activated.
Further, in Hovang's armed away mode the second group of detectors and
associated control logic is armed (the recited "fourth mode").
Claim 1 further recites, in pertinent part, "the controller is configured
to place the second security system in the third mode in response to a
determination that the first security system is in the first mode." We note
that claim 1 does not limit how the determination is made. Thus, under the
broadest reasonable interpretation, the controller placing Hovang's alarm
system in the armed home mode teaches a determination by the controller
that the first group of detectors and associated control logic are armed and
functioning as illustrated in the left half of Hovang's Figure 3 (the recited
"first mode"). Moreover, in response to the alarm system's determination
that the first group of detectors and associated control logic are armed and
functioning as illustrated in the left half of Hovang's Figure 3 (the recited
"first mode"), the alarm system is also configured to disarm (the recited
"third mode") the second group of detectors and associated control logic (the
recited "second security system"). The analysis is similar regarding the
recited "second mode" and "fourth mode."
Hovang' s first group of detectors and associated control logic armed
and functioning as illustrated in the left half of Hovang's Figure 3 (the
recited "first mode") defines a response that differs from the first group of
detectors and the associated control logic armed and functioning as
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illustrated in the right half of Hovang's Figure 3 (the recited "second
mode").
Claim 7
Regarding independent claim 7, our findings presented above for
claim 1 concerning the recited first, second, third, and fourth modes are
equally applicable to claim 7. That is, Hovang's armed home mode teaches
determining that the second group of detectors and associated control logic
is disarmed (the recited "in the third mode"), wherein the second group of
detectors and associated control logic are disarmed (the recited "the second
security system operates in ... the third mode") based at least in part upon
the first group of detectors and associated control logic armed in the armed
home mode ( the recited "based at least in part upon a mode in which the first
security system is operating").
Claim 7 further recites "placing ... the first security system into the
second mode based on an indication received by a processor of the first
security system." Hovang's control unit, including a processor, arms and
disarms the first and second group of detectors. Hovang ,r,r 17, 23. Hovang,
then, at least suggests Hovang' s first group of detectors is placed into the
armed away mode based on an indication received by the processor of the
first group of detectors.
Hovang further teaches arming the second group of detectors and
associated control logic (the recited "placing ... the second security system
in the fourth mode") in the armed away mode in response to a determination
that the first group of detectors and the associated control logic is armed in
the armed away mode (the recited "determination that the first security
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system is in the second mode"). We note that claim 7 does not limit how the
determination is made.
Claim 14
Regarding claim 14, our findings presented above for claim 7 are
equally applicable to claim 14. That is, Hovang's armed away mode teaches
arming the second group of detectors and associated control logic (the
recited "placing ... the second security system in the fourth mode") in
response to a determination that the first group of detectors and the
associated control logic is armed in the armed away mode (the recited
"determination that the first security system is in the second mode").
Claims 8-13 and 15
We have entered a new ground of rejection for claim 7. We leave to the
Examiner to consider the patentability of claims 8-13 and 15, which depend
from claim 7, in light of our findings and conclusions supra regarding claim
7. The fact that we did not enter new grounds of rejection for claims 8-13
and 15 should not be construed to mean that we consider claims 8-13 and
15 to be patentable over the prior art of record.
DECISION
The Examiner's decision to reject claims 1---6 and 16-21 under
35 U.S.C. § 103 is affirmed, but the Examiner's decision to reject claims 7-
15 under 35 U.S.C. § 103 is reversed. Regarding the affirmed rejections,
37 C.F.R. § 4I.52(a)(l) provides "Appellant may file a single request for
rehearing within two months from the date of the original decision of the
Board."
In addition to affirming the Examiner's rejection of one or more
claims, we enter a new ground of rejection for claims 1, 7, and 14 under
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35 U.S.C. § 103 pursuant to 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides
"[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 4I.50(b)(l), in order to preserve the right to
seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection, the effective date of the affirmance is deferred until
conclusion of the prosecution before the Examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
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