Kevin Perry

Patent Trials and Appeals BoardMar 22, 2021

2019006948 (P.T.A.B. Mar. 22, 2021)

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. 13/395,059 06/04/2012 Kevin Perry 031898.00003 2282 4372 7590 03/22/2021 ARENT FOX LLP 1717 K STREET, NW WASHINGTON, DC 20006-5344 EXAMINER WANG, JACK K ART UNIT PAPER NUMBER 2687 NOTIFICATION DATE DELIVERY MODE 03/22/2021 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): patentdocket@arentfox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN PERRY Appeal 2019-006948 Application 13/395,059 Technology Center 2600 Before ALLEN R. MACDONALD, CHRISTA P. ZADO, and AMBER L. HAGY, Administrative Patent Judges. ZADO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 13–21, 24, 26–28, and 36. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Kevin Perry. App. Br. 1. Appeal 2019-006948 Application 13/395,059 2 CLAIMED SUBJECT MATTER The claims are directed to an apparatus and method for tracking an object. Claim 13, reproduced below, is illustrative of the claimed subject matter: A system for tracking an object, the system comprising: a wristband comprising at least one slot for retaining a first receiver and at least one button for selectively enabling operation of the first receiver to monitor a distance between the first receiver of the wristband and a first transmitter device attached to a first object distant from a user, the at least one button being disposed on an inner surface of the wristband, the inner surface being a surface facing a wrist of the user of the wristband, the wristband being in a form of a single, close- ended, ring-like shaped band such that a hand of the user slips through the wristband for wearing and the wristband being further comprising a part to host or accommodate a universal serial bus (USB) connection for communication with a programming component, wherein: the first receiver of the wristband and the first transmitter device each are configured to receive an assigned unique identification code for communication purposes, and the first receiver of the wristband is further configured to wirelessly receive a signal generated by the first transmitter device attached to the first object distant from the user for tracking, and to generate an alert signal when the distance between the first transmitter device and the first receiver of the wristband is determined to be greater than a predetermined value, wherein a plurality of holes disposed on a bottom edge of the wristband to program the wristband. Appeal 2019-006948 Application 13/395,059 3 REFERENCE(S) The prior art relied upon by the Examiner is: Name Reference Date Wentworth US 2002/0190861 A1 Dec. 19, 2002 Butler US 2007/0273506 A1 Nov. 29, 2007 Bell US 2009/0306485 A1 Dec. 10, 2009 REJECTIONS Claims 13–21, 24, 26–28, and 36 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Wentworth, Butler, and Bell. Final Act. 2; Ans. 3. OPINION Specification The Specification states there is a prevalence of incidents of lost valuable items, such as keys, cellular telephones, personal digital assistants, musical instruments, iPods, wallets, cameras, and laptops. Spec. 1. The Specification, therefore, provides an electronic leash for tracking the distance items are from a tracking device. Id. at 2. Specifically, the Summary of Invention discloses a system or “kit,” such as a wristband worn by a user, with monitoring features and that includes a receiver uniquely programmed to receive signals from a signaling clip or transmitter securable to an item to be tracked. Id. Discussion The Board’s role in an appeal is to “review adverse decisions of examiners upon applications for patents.” 35 U.S.C. § 6(b). The Board reviews obviousness rejections for error based upon the issues identified by Appeal 2019-006948 Application 13/395,059 4 the appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1442, 1445 (Fed. Cir. 1992)). “Specifically, the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.” Id. Appellant submits that all the rejected claims stand together (App. Br. 3), and provides argument specific to claim 13 (id. at 5–10), from which all remaining rejected claims depend. Among Appellant’s arguments, Appellant challenges the Examiner’s finding that Wentworth discloses “at least one slot for retaining a first receiver and at least one button,” as recited in claim 13. Appeal Br. 7. For the reasons discussed below, we find that the Examiner has erred in finding that Wentworth discloses “at least one slot for retaining a first receiver.” Figure 1 of Appellant’s Specification provides a non-limiting embodiment of a slot. Figure 1 shows four separate chip/circuit boards 12 (also referred to as receivers in the Specification) embedded in wristband 10, wherein each chip/circuit board 12 is embedded in a slot in the wristband. Spec. 3–4, 8–9, Fig. 1. Each chip/circuit board 12 is uniquely numbered and can be programmed to separately access a corresponding chip/circuit board used to tag items to be monitored. Id. at 3–4, 8–9. For the “slot” limitation, the Examiner relies on master device 10, shown in Figure 1 of Wentworth. Final Act. 3 (“Wentworth discloses the system performs the same function as it does separately of for providing a system for tracking an object, the system comprising: at least one slot for retaining a first receiver (10, Fig. 1).”). Master unit 10 in Wentworth is a device comprising, for example, plastic housing 12, and additional features Appeal 2019-006948 Application 13/395,059 5 including faceplate 14, switches 16, 18, 20, and 24, display area 26, display screen 28, on/off switch 38, and antenna 40. Wentworth Fig. 1, ¶ 32. Notably, the Examiner does not identify a “first receiver,” nor a “slot for retaining a first receiver.” Final Act. 3. As we noted above, master unit 10 comprises several features. Without clarification as to what the Examiner asserts to be a “first receiver” and “slot for retaining a first receiver,” we do not discern how Wentworth teaches or suggests a “slot for retaining a first receiver.” In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). To establish prima facie obviousness of a claimed invention, the Examiner must show that all of the claim limitations are taught or suggested by the prior art. See In re Royka, 490 F.2d 981, 985 (CCPA 1974). Here, for the aforementioned reasons, the Examiner has not established that the prior art teaches or suggests a “slot for retaining a first receiver,” as recited in claim 13. For the above reasons, we reverse the Examiner’s obviousness rejection of claim 13 and the remaining rejected claims, all of which depend from claim 13. In light of our decision, above, to reverse the Examiner’s rejection, we need not reach Appellant’s additional arguments. However, we note the Examiner addresses Appellant’s argument that Wentworth fails to disclose “at least one button” (Appeal Br. 7), clarifying that button 38 in Wentworth performs the same function of claim 13 (Ans. 3). The Examiner also addresses how Wentworth discloses “the first receiver and the transmitter device each are configured to receive an assigned unique identification Appeal 2019-006948 Application 13/395,059 6 code” (see Appeal Br. 7), clarifying that the rejection does not rely solely on Wentworth’s exchange of unique identification information during set-up, as suggested by Appellant (Ans. 3–4). As explained by the Examiner, such identification information is stored in both Wentworth’s receiver and transmitter and used after set-up for communication purposes. Ans. 3–4. We also find unpersuasive Appellant’s argument that the button in Butler does not perform the recited feature, i.e., “selectively enabling operation of the first receiver to monitor.” App. Br. 7–8. The Examiner relies on Wentworth rather than Butler for the recited feature. Final Act. 3. As noted above, the Examiner identifies button 38 of Wentworth, which is an on/off switch for master unit 10, that enables and disables the monitoring feature of Wentworth. Ans. 3; Wentworth ¶ 32. As to the recited feature that the button be “disposed on an inner surface of the wristband” (emphasis added), Appellant correctly points out that Butler does not expressly disclose whether the button is placed on the inner surface or the outer surface of Butler’s wristband. Appeal Br. 7–8; Butler Fig. 2A. The Examiner identifies alarm off switch 44 in Figure 2A of Butler for disclosure of button placement on a wristband. Final Act. 3. However, as can be seen in Figure 2A of Butler, it is unclear whether alarm off switch 44 is disposed on an inner surface of wristband form factor 52, and the specification of Butler does not expressly provide that switch 44 is on wristband 52’s inner surface. Butler Fig. 2A; see also id. at ¶ 14 (describing Figure 2A). The Examiner responds, however, that the different location of the button neither enhances nor adds additional function to the claimed invention, and that the different location of the button would have Appeal 2019-006948 Application 13/395,059 7 been an obvious design choice. Ans. 5. Appellant does not respond substantively to the Examiner’s Answer. See generally Reply. Regarding Appellant’s argument that Bell fails to fulfill the deficiencies of Wentworth and Butler (Appeal Br. 8), we note the Examiner cites Bell for the limited purpose of showing that using Universal Serial Bus (USB) as a protocol to connect to an external device would have been obvious as a design choice. Final Act. 3. We find persuasive the Examiner’s argument that both master unit 10 and subordinate units in Wentworth are designed to have their batteries recharged, that use of USB connectors to recharge portable devices was well known in the art, and that using a USB connector would have been an obvious design choice. Ans. 5– 6. Appellant also argues that Butler and Bell are non-analogous art. Appeal Br. 8–9. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the same 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). We do not find Appellant’s argument as to Bell to be persuasive. As we explained above, Bell is relied on for the limited purpose of showing the state of the art, namely that the USB protocol was well known in the art for use in charging batteries on portable devices. As to Butler, the Examiner responds that Butler is in the same field of endeavor as the claimed invention. Ans. 8–9. However, the Examiner does not articulate a field of endeavor, or explain the reasoning for finding Butler to be in the same field of endeavor. Id. Appellant asserts that the field of Appeal 2019-006948 Application 13/395,059 8 endeavor of the claimed invention is systems for tracking objects, arguing this is different from Butler, which discloses a personal alarm and notification system. Appeal Br. 8–9. Assuming arguendo, without deciding, that Butler is not in the same field of endeavor as the claimed invention, Butler would still be analogous art if reasonably pertinent to the particular problem with which the inventor is involved. The Examiner does not address the latter question. Finally, Appellant argues the Examiner has failed to provide sufficient motivation to combine Wentworth, Butler, and Bell. Appeal Br. 9–10. As we explain above, Bell is relied on for a limited purpose, and we do not find Appellant’s arguments regarding Bell to be persuasive. Regarding Butler, we agree that the Examiner has not provided sufficient analysis. Final Act. 4; Ans. 6–7. The Examiner asserts that a skilled artisan could have combined the elements using known methods, and that in combination each element merely performs the same function as it does separately. Final Act. 4. The Examiner further finds that the combination would have been predicable and resulted in the claimed invention. Id. However, the Examiner does not provide any reasoned explanation or evidence to support these findings. The Court in KSR provides “when the question of whether a patent claiming the combination of elements of prior art is obvious . . . [i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). However, a finding of obviousness still requires explicit analysis including articulated reasoning and evidentiary support. Id. (citing In re Kahn, 441 F.3d 997, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness Appeal 2019-006948 Application 13/395,059 9 grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). In accordance with this principle, the Examiner’s invocation of “predictable” results, without accompanying analysis and evidentiary support, is insufficient to support a finding of obviousness. CONCLUSION The Examiner’s rejection is reversed. More specifically, we reverse the Examiner’s rejection of claims 13– 21, 24, 26–28, and 36 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Wentworth, Butler, and Bell. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13–21, 24, 26–28, 36 103(a) Wentworth, Butler, Bell 13–21, 24, 26–28, 36 Overall Outcome 13–21, 24, 26–28, 36 REVERSED