Ex Parte Shaju

Patent Trial and Appeal BoardMar 17, 2015

11903097 (P.T.A.B. Mar. 17, 2015)

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. 11/903,097 09/20/2007 Chakkalamattam Johnny Shaju 678-3276 9057 66547 7590 03/17/2015 THE FARRELL LAW FIRM, P.C. 290 Broadhollow Road Suite 210E Melville, NY 11747 EXAMINER GAO, JING ART UNIT PAPER NUMBER 2645 MAIL DATE DELIVERY MODE 03/17/2015 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 CHAKKALAMATTAM JOHNNY SHAJU _____________ Appeal 2013-001078 Application 11/903,097 Technology Center 2600 ______________ Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and NABEEL U. KHAN, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1 through 20. We affirm. INVENTION The invention is directed to a method of tracking a mobile, wireless, electronic device in which when the device lost or stolen and the subscriber identity module is changed, the tracking feature stealthily captures images and sends them to an email address. See Abstract of Appellant’s Specification. Claim 1 is illustrative of the invention and reproduced below: 1. A method for tracking electronic communication devices which use a removable identity card, the method comprising: Appeal 2013-001078 Application 11/903,097 2 providing a menu option for inputting a password and a destination Email address/phone number for sending an alert message when a user activates a tracking control operation; inputting a password and a destination Email address/phone number for sending the alert message; storing the destination Email address/phone number, and identity data and tracking control feature-activation status data in a memory; comparing the identity data stored in the memory with new identity data whenever a new identity card is inserted and once the tracking control feature is successfully activated; stealthily capturing a video if the identity data stored in the memory and the new identity data are different; and transferring the captured video to the destination Email address/phone number along with the current location information of the mobile device if the current location information is available, wherein if the transferring is unsuccessful, attempting to transfer with increased delay after each attempt. REJECTIONS AT ISSUE The Examiner has rejected claims 1 through 15, 19, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Chandran, Snow, and Mui. Answer 6–12. 1 1 Throughout this opinion, we refer to the Appeal Brief filed April 9, 2012, Reply Brief filed October 15, 2012, and the Examiner’s Answer mailed August 15, 2012. Appeal 2013-001078 Application 11/903,097 3 The Examiner has rejected claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Chandran, Snow, Mui, and Cui. Answer 13. The Examiner has rejected claims 17 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Chandran, Snow, Mui, and Yokota. Answer 13–14. ISSUES Appellant argues on pages 7 through 12 of the Appeal Brief, and pages 2 through 4 of the Reply Brief that the Examiner’s obviousness rejection of independent claims 1 and 7 is in error. The dispositive issues presented by these arguments are: a) Did the Examiner err in finding the combination of Chandran, Snow, and Mui teaches stealthily capturing a video, as recited in representative claim 1? b) Did the Examiner err in finding the skilled artisan would combine the teachings of Chandran, Snow, and Mui? ANALYSIS We have reviewed Appellant’s arguments in the Briefs, the Examiner’s rejection and the Examiner’s response to the Appellant’s arguments. We disagree with Appellant’s conclusion that the Examiner erred in rejecting the claims under 35 U.S.C. § 103(a). With respect to the first issue, Appellant argues Snow teaches a mobile device in which a signal is issued from a network provider to capture image data and transmit the image data to a network provider but does not teach the image is captured stealthily. App. Br. 9. In response to this argument, the Examiner finds that Snow teaches stealthily capturing a video Appeal 2013-001078 Application 11/903,097 4 and further that the skilled artisan would recognize that the video is captured either with or without a preview (a stealthy mode). We concur with the Examiner. We do not concur with Appellant’s assertion that the claim limitation “stealthily” should be interpreted as “intended to escape observation” as we do not find that Appellant’s Specification supports such a narrow interpretation. Reply Br. 3–4. Nonetheless, applying this definition, we consider Snow’s teaching, directed to the remote activation of the video capture, to be stealthily capturing the video as the capture is not initiated by the person in possession of the mobile device and thus, the video would escape their observation. Further, as Snow teaches the purpose of capturing video is to assist in tracking and or locating the portable device, we concur with the Examiner that the skilled artisan would recognize that the video is captured in a manner that escapes observation. 2 Thus, Appellant’s arguments directed to the first issue have not persuaded us of error in the rejection of representative claim 1. Appellant’s arguments directed to the second issue assert that the Examiner has not provided an adequate motivation to combine the teachings of Chandran, Snow, and Mui. App. Br. 9–13. The Examiner, in response to these arguments, cites Snow’s teaching of assisting in providing information to locate a lost or stolen device. Answer 16–17. Further, the Examiner finds that using Chandran’s teaching would reduce delays and ensure successful 2 Additionally, we note Appellant’s Specification, identifies that it was known in the prior art for a phone in a tracing mode to stealthily capture a photo (photo captured when an ordinary waiting display shown on the device, see discussion of Japanese Publication No. 2004-112126 on page 2 of Appellant’s Specification). Appeal 2013-001078 Application 11/903,097 5 transmission of information. Answer 17. Based upon these findings the Examiner concludes the combination is obvious. We concur with the Examiner’s conclusion as the Examiner has provided a reasoned rationale citing evidence of record to support the combination. Further, Appellant’s arguments asserting a lack of motivation to combine the references are not persuasive, as this is not the only test to determine obviousness. The Supreme Court has stated that “the obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Thus, Appellant’s arguments directed to the second issue have not persuaded us of error with respect to representative claim 1. Accordingly, we sustain the Examiner’s rejection of claim 1 and claims 2 through 15, 19, and 20, which are grouped with claim 1. Appellant asserts the Examiner’s rejections of claims 16, 17, and 18 are in error for the same reasons as the rejection of claim 1. Accordingly, we sustain the Examiner’s rejection of claims 16, 17, and 18. DECISION The decision of the Examiner to reject claims 1 through 20 is affirmed. ORDER 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