Ex Parte Wirola et al

Patent Trial and Appeal Board

Mar 20, 2018

13981748 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/981,748 07/25/2013
10928 7590
Locke Lord LLP
IP Docket Department
200 Vesey Street # 20th Floor
New York, NY 10281-2101
03/22/2018
FIRST NAMED INVENTOR
Lauri Wirola
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.
1004289.874US 2276
EXAMINER
INGRAM, THOMAS P
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
ptopatentcommunication @lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURI WIROLA and VILLE MYLL YLA
Appeal2017-005297
Application 13/981,748
Technology Center 3600
Before STEVEN D.A. MCCARTHY, CHARLES N. GREENHUT, and
FRANCES L. IPPOLITO, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
37-57. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm and designate our opinion as including new grounds of
rejection.
Appeal2017-005297
Application 13/981,748
CLAIMED SUBJECT MATTER
The claims are directed to an apparatus configured to select a context
specific positioning system. Claim 37, reproduced below, is illustrative of
the claimed subject matter:
37. An apparatus comprising:
a microphone; and
a processor and memory including computer program
code, the memory and the computer program code configured to,
with the processor, cause the apparatus to:
detect, via the microphone, sound from an environment
proximal to the apparatus, wherein detecting sound comprises
converting the sound to audio electrical signals and wherein the
sound is devoid of a predefined code generated for transmission
to the apparatus;
determine a context of the apparatus using the detected
sound, wherein determining a context comprises determining
when the apparatus is located indoors and determining when the
apparatus is located outdoors; and
provide signaling to allow for selection of a context-
specific service for use in navigation by the apparatus based upon
the result of the determined context.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Divakaran
Hanna by
Srinivasan
Roeding
Rhoads
Kim
US 2005/0125223 Al
US 2010/0114344 Al
US 2010/0134278 Al
US 2011/0029370 Al
US 2012/0165046 Al
us 8,606,293
2
June 9, 2005
May 6, 2010
June 3, 2010
Feb. 3, 2011
June 28, 2012
Dec. 10, 2013
Appeal2017-005297
Application 13/981,748
REJECTIONS
Claims 37-57 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 37--40 and 46-57 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Srinivasan, Roeding, and Rhoads.
Claims 41 and 45 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Srinivasan, Roeding, Rhoads, and Hannaby.
Claims 42 and 43 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Srinivasan, Roeding, Rhoads, Hannaby, and Divakaran.
Claim 44 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Srinivasan, Roeding, Rhoads, Hannaby, and Kim.
OPINION
All claims are either argued as a group based on claim 37 (see 37
C.F.R. § 41.37(c)(l)(iv)) or argued based only on similarity to claim 37, or
dependency from claim 37 or a similar claim (See App. Br. 16).
The § 112 rejection pertains to the amendment introduced in an effort
to define around Srinivasan: "wherein the sound is devoid of a predefined
code generated for transmission to the apparatus." The Examiner regarded
this amendment as introducing new matter unsupported by the Specification
as originally filed in violation of the written description requirement. Final
Act. 3--4.
Appellants incorrectly argue that the Examiner applied a literal test in
determining compliance with the written description requirement. App. Br.
12. The Examiner correctly characterized the newly added limitation as a
negative limitation and pointed out the absence of any support, express or
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Application 13/981,748
otherwise, for this limitation. Final Act. 3--4. The Examiner directed
Appellants' attention to the portion of the MPEP, MPEP § 2173.05(i),
specifically discussing the requirement for negative limitations to comply
with the written description requirement. 1 Ans. 2-3. Appellants again
dismiss the Examiner's position as applying a literal test and point to several
examples, "such as ice crunching underfoot, the sound of walking on a
carpeted floor, street traffic, the sound of walking on leaves in autumn," that
fall within the scope of claim 37 as currently presented. Reply. Br. 2.
Appellants' arguments are not consistent with the proper standards for
addressing negative limitations under§ 112, first paragraph. As with any
limitation considered in light of the requirements of§ 112, first paragraph,
the mere disclosure of particular species falling within a generic limitation is
not necessarily demonstrative of possession sufficient to justify a claim
including that generic limitation. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010); LizardTech, Inc. v. Earth Resource
Mapping, Inc. 424 F.3d 1336, 1345--47 (Fed. Cir. 2005). Under certain
circumstances, the description requirement of 35 U.S.C. § 112, first
paragraph, may operate to defeat the patentability of a narrower but not a
broader claim. In re Smith, 458 F.2d 1389, 173 USPQ 679 (CCPA 1972).
Whether broadening or narrowing of the claims is involved, the inquiry into
whether the description requirement is met is based on whether persons
skilled in the art would recognize in Appellants' original disclosure a
description of the invention now defined by the claims. Importantly, MPEP
§ 2173 .05 (i) states, "[ t ]he mere absence of a positive recitation is not basis
1 It is noted that this discussion of the compliance of negative limitations
with 112, first paragraph, is included as a subtopic of the discussion of the
compliance of negative limitations with 112, second paragraph.
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Application 13/981,748
for an exclusion." In Santarus, Inc. v. Par Pharm., Inc.,694 F.3d 1344, 1351
(Fed. Cir. 2012), our reviewing court stated that "[n]egative claim
limitations are adequately supported when the specification describes a
reason to exclude the relevant limitation." Here, Appellants' Specification
does not appear to provide any reason to exclude sounds containing
predefined codes. Appellants do not demonstrate where predefined codes are
discussed in, or how predefined codes are implicitly relevant to, Appellants'
Specification as originally filed. As the Examiner points out, Appellants'
device will function the same to detect the sound of leaves or ice crunching
regardless of whether those sounds are themselves recordings or include any
predefined codes. Appellants have not pointed to any portion of the
Specification to demonstrate that predefined codes or the absence thereof
have any bearing on the operation of Appellants' device sufficient to
demonstrate to those skilled in the art that Appellants possessed a device that
operated exclusively using sounds devoid of predefined codes. Although not
necessarily dispositive (see, e.g., Inphi Corp. v. Netlist, Inc., 805 F.3d 1350,
1354 (Fed. Cir.2015)), the absence of any disclosure or discussion regarding
predefined codes weighs against the Specification being construed as
implicitly disclosing the exclusion of predefined codes. Accordingly, based
on the record before us, we sustain the Examiner's rejection under§ 112,
first paragraph.
Regarding the rejection under§ 103(a), the Examiner relies on
Srinivasan for the basic device, Roeding to demonstrate it was known to
detect indoor or outdoor surroundings, and Rhoads to demonstrate it was
known to use detection sounds not including predefined codes. Final Act. 4--
6. Appellants summarize the claim language and the disclosure of
Srinivasan, neither of which are issues in dispute. See App. Br. 13-14.
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Application 13/981,748
Appellants point out that Srinivasan is directed to an indoor environment but
do not provide any specific arguments to refute the Examiner's position
concerning Roeding, that some stores contain indoor and outdoor areas, or it
may be desirable to determine story entry and exit. Final Act. 4 (citing
Roeding, paras. 12-22); Ans. 4--5. Appellants take issue with the
Examiner's reliance on Rhoads because, 1) Srinivasan already has a code-
based mechanism for achieving the location-determining result, 2)
modification with Rhoads's arrangement would not be "more effective[]" as
the Examiner found would have been a motivation for the proposed
combination, and 3) Appellants cannot envision how Rhoads's methodology
would be implemented. App. Br. 15-16.
Regarding Appellants' first point, the fact that a particular goal is
already achieved is not evidence of the nonobviousness of other mechanisms
for achieving it. Skilled artisans often seek out alternative solutions to
problems. Teaching one thing does not constitute teaching away from all
others. See MPEP § 2143.0l(I). Regarding Appellants' second and third
points, we recognize the Examiner's explanations are somewhat lacking in
these regards. Nevertheless, the record before us includes both a motivation
and a mechanism to apply sound-detecting methodology of the type
described in Rhoads, i.e., utilizing sounds devoid of predefined codes. This
is expressly taught by the embodiment depicted in Figure 21 of Srinivasan
and described at paragraphs 158-161. Audio lacking any predefined codes
is broadcast via first speaker 2104. Detection of the unencoded audio occurs
via sensor 2110. In Srinivasan, based on the detected unencoded audio,
encoded audio is rebroadcast via speaker 2114. The important aspect of this
arrangement, insofar as the pending claims are concerned, is that it
demonstrates that 1) consistent with Rhoads (see Final Act. 6 (citing Rhodes,
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Application 13/981,748
para. 332.)), it was known to detect sounds devoid of predefined codes by
using characteristics of the sounds themselves (para. 158), and 2) such an
arrangement could be implemented in Srinivasan's device. It is noted that
the specific implementation chosen by Srinivasan involves rebroadcasting
encoded audio. However, first, this is not precluded by the open-ended
claim; and second, this step could be dispensed with the sensing and location
determining could be performed in the user's device as in Rhodes. Paragraph
161 of Srinivasan provides an express motivation for using such an
arrangement:
the arrangement of FIG. 21 enables the code system to be a
standalone system that does not necessarily electrically
connect to an existing audio system. Thus, the encoding aspects
shown in FIG. 21 may be separately installable into an existing
system without disruption thereto.
Considering these additional aspects of Srinivasan, we must agree
with the Examiner's conclusion of obviousness. However, as we rely on
additional facts and reasoning, we designate our discussion as introducing
new grounds of rejection so as to afford Appellants the procedural options
associated therewith.
DECISION
The Examiner's rejections are affirmed.
Pursuant to 37 C.F.R. § 41.50(b) we designate this opinion as
including new grounds of rejection.
RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
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Application 13/981,748
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
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.
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.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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