Ex Parte Wirola et alDownload PDFPatent Trial and Appeal BoardMar 20, 201813981748 (P.T.A.B. Mar. 20, 2018) Copy Citation 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 3 Appeal2017-005297 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. 4 Appeal2017-005297 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. 5 Appeal2017-005297 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, 6 Appeal2017-005297 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 7 Appeal2017-005297 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) 8 Copy with citationCopy as parenthetical citation