MOTOROLA SOLUTIONS, INC.

Patent Trials and Appeals Board

Mar 29, 2022

2021001064 (P.T.A.B. Mar. 29, 2022)

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. 16/517,714 07/22/2019 SWEE YEE SOO PAT24094-US-PRI 9648 22917 7590 03/29/2022 MOTOROLA SOLUTIONS, INC. IP Law Docketing 500 W. Monroe 43rd Floor Chicago, IL 60661 EXAMINER DSOUZA, JOSEPH FRANCIS A ART UNIT PAPER NUMBER 2632 NOTIFICATION DATE DELIVERY MODE 03/29/2022 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): USAdocketing@motorolasolutions.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SWEE YEE SOO, CHU HAU TAN, CHOON KANG WONG, and CHEE YIN WONG Appeal 2021-001064 Application 16/517,714 Technology Center 2600 Before JASON V. MORGAN, MICHAEL J. STRAUSS, and DAVID J. CUTITTA II, Administrative Patent Judges. STRAUSS, 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 1-10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (2022). Appellant identifies Motorola Solutions, Inc., as the real party in interest. Appeal Brief filed September 9, 2020 (“Appeal Br.”). Appeal 2021-001064 Application 16/517,714 2 CLAIMED SUBJECT MATTER Summary Appellant’s claimed subject matter relates to “providing a warning about a suspect vehicle.” Spec. 17:1, Abstract of the Disclosure.2 In particular During operation automatic-license-plate-reading (ALPR) circuitry will scan a license plate and determine a current location of an owner of a vehicle. If the current location of the owner of the vehicle, and a current location of the vehicle differ, a warning is provided to the user of the ALPR circuitry. Id. at 17:2-5. Illustrative Claim Claims 1, 6, and 7 are independent. Claim 1, reproduced below with labels added, formatting altered, and a dispositive limitation at issue italicized, illustrates the claimed subject matter: 1. An apparatus comprising: [(i)] a GPS receiver configured to determine a location of the apparatus; [(ii)] a camera configured to capture an image of a license plate; [(iii)] logic circuitry configured to [(a)] receive a location of a smart device for an owner associated with the license plate and 2 In addition to the above-noted Appeal Brief, throughout this Decision we refer to: (1) Appellant’s Specification filed July 22, 2019 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed August 20, 2020; (3) the Examiner’s Answer (“Ans.”) mailed November 24, 2020; and (4) the Reply Brief filed November 30, 2020 (“Reply Br.”). Appeal 2021-001064 Application 16/517,714 3 [(b)] provide a warning if the location of the smart device differs from the location of the apparatus by a predetermined amount. Appeal Br. 14 (Claims Appendix). REFERENCES The Examiner relies on the following prior art references:3,4 Name Reference Date Monks US 8,892,132 B2 Nov. 18, 2014 Miller US 9,471,838 B2 Oct. 18, 2016 REJECTIONS The Examiner rejects the claims as follows under 35 U.S.C. § 103: Claims References Final Act. 1-10 Monks, Miller 4-8 OPINION We review the appealed rejection for error based upon the issues identified by Appellant and in light of Appellant’s arguments and evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). The Examiner finds that Monk’s disclosure of using over-the-air identifiers (OTAIs) for tracking mobile devices including the use of license plate cameras to collect MAC addresses of interest, a probe request for obtaining additional information, and performing an action related to the MAC address, teaches or suggests claim 1’s elements (i) through (iii)(a). Final Act. 4. However, the Examiner finds Monks is deficient in that it “does not disclose the condition that the location of the smart device differs 3 All citations to the references use the first-named inventor only. 4 We note both the Monks and Miller references indicate they are assigned in common to the assignee of the instant application, Appellant, Motorola Solutions, Inc. Appeal 2021-001064 Application 16/517,714 4 from the location of the apparatus by a predetermined amount and providing a warning.” Id. at 5. To remedy the deficiency, the Examiner finds Miller’s disclosure of using a vehicle’s license plate information to narrow a search of an image database for a matching image taken of a driver of the vehicle teaches or suggests claim 1’s element (iii)(b) of “provid[ing] a warning if the location of the smart device differs from the location of the apparatus by a predetermined amount.” Id. According to the Examiner “it would have been obvious . . . to use the method, as taught by Miller in the system of Monks because this would allow a police officer to know if the car was possibly stolen (license plate doesn’t match the smart device in the car).” Id. Appellant contends, inter alia, [Miller discloses] that if a facial-recognition match is made, the information on the match is provided to the police officer. Nowhere is it taught or suggested to provide a warning, and certainly, nowhere is it taught to provide the warning to the user if the location of the smart device differs from the location of the first vehicle by a predetermined amount. Appeal Br. 12. The Examiner responds, as follows: Monks doesn’t explicitly state that “correlating [captured MAC addresses and associated additional pieces of information to detect triggers indicative of situations of interest]” means “determining that the location of the smart device differs from the location of the apparatus by a predetermined amount”, as required by claim 1. Hence, [the] Examiner used Miller because Miller explicitly discloses comparing a parameter from the database with a target parameter (images compared). One of ordinary skill in the art can use the same “comparison method” that Miller makes (to determine if the vehicle is possibly stolen or not) in Monk’s system, except that a different parameter from the database is being compared. [The] Examiner argued that Appeal 2021-001064 Application 16/517,714 5 comparing a “location parameter’’ is an obvious variation of comparing an “image parameter” ([Final rejection (CTFR)5] 8/20/20, page 5, 2nd & 3rd paragraphs; page 3, Response under b)). Both are merely different parameters from a database, that are compared against their respective target values, and one of ordinary skill in the art can easily do the comparison for either parameter. Hence, they are obvious variations in that they are merely two different parameters from database that are compared. Ans. 10. Appellant responds, questioning “[h]ow can comparing a location parameter be an obvious variation of comparing an image parameter?” Reply Br. 2. Appellant’s argument is persuasive of reversible Examiner error. The Examiner provides insufficient evidence or reasoned argument in support of the finding that “comparing a ‘location parameter’ is an obvious variation of comparing an ‘image parameter.’” Ans. 10. Appellant’s claims are directed to using an apparatus including a GPS receiver installed within a police car to determine the location of the apparatus. Spec. Figs. 1, 2. Based on the determined location, the apparatus determines a location of a vehicle and provides a warning if the vehicle is located some distance from its owner. In contrast, Miller performs facial recognition by comparing an image of a driver of a vehicle with a large database of driver images using license plate information to narrow the search of potentially matching images. In the absence of sufficient evidence or explanation, we find insufficient support for the Examiner’s finding that comparing images is an obvious variation of claim 1’s comparing of locations. 5 Otherwise herein cited as “Final Act.” Appeal 2021-001064 Application 16/517,714 6 Because we agree with at least one of the Appellant’s contentions of error, we do not reach the merits of Appellant’s other contentions. Accordingly, we do not sustain the rejection of independent claim 1, under 35 U.S.C. § 103 or the rejection of independent claims 6 and 7, which include language similar to the disputed limitation of claim 1. Nor do we sustain the rejection of dependent claims 2-7 and 8-10, each of which stands with its respective base claim. DECISION SUMMARY In summary: REVERSED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-10 103 Monks, Miller 1-10