Ex Parte Apte et al

Patent Trial and Appeal Board

Nov 28, 2016

13551539 (P.T.A.B. Nov. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/551,539 07/17/2012
27752 7590 11/30/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Raj B. Apte
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.
12708 8870
EXAMINER
PASCUAL PEGUERO, NATALI
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJ B. APTE, ERIK JOHN HASENOEHRL, and
CHRISTOPHER PAULSON
Appeal 2016-004068
Application 13/551,539
Technology Center 2400
Before ALLEN R. MacDONALD, KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-004068
Application 13/551,539
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3, 4, and 6-22. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1, 11, and 12 under appeal read as follows
(emphasis and bracketing added):
1. A consumer product mesh network device, comprising:
[(A)] a consumer product that does not have any networking
communications capability; and
[(B)] a consumer product node associated with the consumer product,
[(i)] the consumer product node having a communications
element,
[(ii)] the consumer product and the consumer product node
together forming the consumer product mesh network
device,
[(iii)] wherein the communication element comprises both
[ (a)] a room-limited communication module and
[ (b)] a room-transparent communication module and
[(iv)] wherein the consumer product mesh network device is
capable of forming part of an ad hoc mesh network when
the consumer product mesh network device is placed in
[an] active mesh network.
11. The device of claim 1, wherein the consumer product is a
non-powered implement.
12. The device of claim 11, wherein the non-powered implement
comprises one of an air freshener dispenser, a toothbrush, a
cleaning tool, and a razor.
2
Appeal 2016-004068
Application 13/551,539
Rejection on Appeal
1. The Examiner rejected claims 1, 3, 4, 6, 7, 9, 10, 18, and 19, as
being unpatentable under 35 U.S.C. § 103(a) over the combination of Hufton
et al. (US 2008/0246599 Al, Oct. 9, 2008) ("Hufton") and Pelland et al. (US
2011/0291840 Al, Dec. 1, 2011) ("Pelland"). 1
2. The Examiner rejected claim 8 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Hufton, Pelland, and Birger (US
2009/0265488 Al, Oct. 22, 2009). 2
3. The Examiner rejected claims 11-15 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Hufton, Pelland, and
Olson et al. (US 7,772,986 B2, Aug. 10, 2010) ("Olson"). 3
1 Claims 1, 3, 4, 6, 7, 9, 10, 18, and 19 are grouped together. Although
i~\1ppellants discuss claims 3 and 4 (i\1pp. Br. 3) \x1e do not select either as
representative of this group. Rather, we select claim 1 as representative.
Further as to claims 3 and 4, the discussion thereof does not comply as
separately argued as required by 37 C.F.R. § 41.37(c)(l)(iv) ("Under each
heading identifying the ground of rejection being contested, any claim(s)
argued separately or as a subgroup shall be argued under a separate
subheading that identifies the claim(s) by number." (emphasis added)).
Except for our ultimate decision, claims 3, 4, 6, 7, 9, 10, 18, and 19 are not
discussed further herein.
2 As to this rejection, claim 8 is argued only by repeating the argument for
claim 1. Therefore, our decision as to the underlying § 103 rejection of
claim 1 is determinative. Therefore, except for our ultimate decision, the
Examiner's rejection of this claim is not discussed further herein.
3 As to this rejection, claims 11-15 are argued only by repeating the
argument for claim 1. Therefore, our decision as to the underlying § 103
rejection of claim 1 is determinative. Therefore, except for our ultimate
decision, the Examiner's rejection of this claim is not discussed further
herein.
3
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Application 13/551,539
4. The Examiner rejected claim 16 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Hufton, Pelland, Olson, and
Paniagua et al. (US 2008/0222431 Al, Sept. 11, 2008) ("Paniagua"). 4
5. The Examiner rejected claims 17 and 20-22 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Hufton,
Pelland, and Paniagua. 5
Appellants ' Contention
1. Appellants contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
[T]he Hufton reference relates smart sensors in combination with
dispensing devices. The sensors are described as being capable
of receiving either infrared or radio frequency signals from
transmitters. The sensors are not described as being able to
receive both types of signals and are not described as being able
to transmit signals at all.
App. Br. 3.
2. Appellants also contend that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because:
A description [in Hufton] that the device may be connected to a
computer via a wire for the purpose of downloading data does
4 As to this rejection, claim 16 is not argued. Therefore, our decision as to
the underlying § 103 rejection of claim 1 is determinative. Therefore, except
for our ultimate decision, the Examiner's rejection of this claim is not
discussed further herein.
5 As to this rejection, claims 17 and 20-22 are argued only by repeating the
argument for claim 1. Therefore, our decision as to the underlying § 103
rejection of claim 1 is determinative. Therefore, except for our ultimate
decision, the Examiner's rejection of this claim is not discussed further
herein.
4
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Application 13/551,539
not teach or suggest a device comprising part of a mesh network
of devices.
App. Br. 3.
3. Appellants also contend that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because:
The Pelland reference also fails to teach or suggest network node
devices comprising multiple communication modules.
App. Br. 3.
4. Appellants also contend that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because:
Paragraph 35 of the [Pelland] reference, cited for a teaching of
line of sight communications, relates instead to means for
locating a Health Care Worker and not network communications
means.
App. Br. 3.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious because
the cited references fail to describe the argued limitations?
ANALYSIS
As to the Appellants' above contention 1, we agree in part. We
disagree that in Hufton "[t]he sensors are not described as being able to
receive both types of signals." App. Br. 3. Hufton at paragraph 117
discloses (emphasis added):
The wireless signal can be, for example, one or more of a radio
frequency signal, an ultrasonic signal, a visible spectrum
radiation signal or, as in this particular case, an infrared signal
using the infrared detector 18.
5
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Application 13/551,539
We conclude an artisan would understand "one or more" as teaching both
types of signals. However, we agree with Appellants that in Hufton "[t]he
sensors ... are not described as being able to transmit signals." Id.
Although the Examiner at pages 3--4 of the Answer supplements the Final
Action analysis by referencing transmitter 32, transmitter 32 is not part of
the wearable smart disinfectant dispenser assembly 10 (Fig IA) which is
identified as the communication element. Rather, the transmitter 32 is part
of fixed disinfectant dispenser assembly 31 (Fig. 2A) and transmits to sensor
18, which is part of the wearable smart disinfectant dispenser assembly 10.
Our review does not find where sensor 18 transmits data. Rather, in Figure
2A the data received by sensor 18 passes to controller 20, then to USB
interface 34, and then to the central computer 36. Therefore, we agree with
Appellants that as to claim 1 (and the claims that depend therefrom), "the
cited combination of references fails to teach or suggest each of the
limitations set forth in the claims." App. Br. 2.
As to the Appellants' above contention 2, we agree in part. The
Examiner explicitly states "Hufton teaches a consumer product mesh
network device" (Final Act. 2, emphasis added). We agree with Appellants
that Hufton does not. However, a full reading of the rejection shows that the
Examiner goes on to acknowledge that the mesh aspect of the network is
lacking in Hufton (Final Act. 3: 10-14 ). The Examiner then turns to Pelland
to show the wireless mesh network aspect. Appellants do not dispute that
Pelland (see Abstract) describes a wireless mesh network. Therefore,
although we agree with Appellants that Hufton does not teach or suggest a
device comprising part of a mesh network of devices, we disagree that the
Examiner has erred as to finding that the prior art teaching a consumer
6
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Application 13/551,539
product and the consumer product node together forming a consumer
product mesh network device.
As to the Appellants' above contention 3, we disagree. Appellants
argue that Pelland does not teach or suggest "network node devices
comprising multiple communication modules." App. Br. 3. However, the
Examiner did not cite Pelland for the "multiple communication modules"
limitation. Rather, the Examiner relied on Hufton to teach the "multiple
communication modules" limitation.
[W]herein the communication element comprises both a room-
limited communication module (an infrared signal using the
infrared detector; Page 5, Paragraph 0117) and a room
transparent communication module (the wireless signal can be,
for example a radio frequency signal; Page 5, Paragraph
0117).
Final Act. 3.
We conclude that Appellants' argument does not address the actual
reasoning of the Examiner's rejections. Instead; Appellants attack the
references singly for lacking teachings that the Examiner relied on a
combination of references to show. It is well established that one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 425 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Our reviewing court requires that references must be read,
not in isolation, but for what they fairly teach in combination with the prior
art as a whole. Merck, 800 F .2d at 1097.
As to the Appellants' above contention 4, we disagree. Although
Appellants are correct that Pelland at paragraph 35 states it is determining
the location of a Health Care Worker, an artisan reading the full Pelland
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Application 13/551,539
disclosure would understand that Pelland is in fact determining the location
of a badge (network communications means) on the Health Care Worker.
NEW GROUNDS OF REJECTION
We reject claims 1, 11, and 12 herein as obvious under 35 U.S.C.
§ 103(a) based on new references. We leave it to the Examiner to review the
patentability of claims 3, 4, 6-10, and 13-22 over these new references and
previously applied references.
We reject claim 1 as being unpatentable under 35 U.S.C. § 103(a)
over the combination of Hazani et al. (US 2008/0231111 Al, Sept. 25, 2008)
("Hazani") and Smith et al. (US 7,324,824 B2, Jan. 29, 2008) ("Smith
'824"). 6
We also reject claims 11 and 12 under 35 U.S.C. § 103(a) over
Hazani, Smith '824, and He et al. (US 6,957,012 B2, Oct. 18, 2005) ("He").
As to claim 1, in the art of outlet add-on modules, Hazani discloses a
consumer product network device (Figure 32b, module 323; at paragraph
224 the plug-in module is for data networking over in-house wiring (i-f 151)),
compnsmg:
[(A)] a consumer product (Figure 32b, night light (house 324 and
lamp 325)) that does not have any networking communications
capability; and
[(B)] a consumer product node (three data connections 34a, 34b and
34c) associated with the consumer product.
6 Smith '824 incorporates by reference Smith et al. (US 7 ,312,752 B2,
Dec. 25, 2007) ("Smith '752").
8
Appeal 2016-004068
Application 13/551,539
Hazani further discloses the consumer product node may comprise:
[(B)(i)] the consumer product node having a communications
element (Figure 20, interface module 250 with connector
258),
[(B)(ii)] the consumer product and the consumer product node
together forming the consumer product network device
(see paragraph 224),
Hazani further discloses the communication element may comprise:
[ (B)(iii)] wherein the communication element comprises both
(at paragraph 17 5 there may be a mix of multiple
interface types)
[ (a)] a room-limited communication module (infrared
non-wired interface at paragraph 174) and
[(b )] a room-transparent communication module (radio
frequency non-wired interface at paragraph 174).
In the art of outlet add-on modules, Smith '824 discloses a network
device (Figure 5, network appliance 130), comprising:
[(B)(iv)] wherein mesh network device is capable of forming
part of an ad hoc mesh network when the consumer
product mesh network device is placed in [an] active
mesh network (at the Abstract the plug-in module is for
forming a wireless mesh network; at column 5, lines 19--
36, the network may be an ad hoc mesh network).
It would have been obvious to one of ordinary skill in the art at the
time the invention was made to substitute the known ad hoc wireless mesh
data network of Smith for the known over in-house wiring data network of
Hazani. "[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)(emphasis added).
9
Appeal 2016-004068
Application 13/551,539
As to claims 11 and 12, Hazani further discloses that the functionality
of any device which is commonly connected to an outlet may be integrated.
In the art of outlet add-on modules, He discloses a consumer product
implement in the form of a non-powered air freshener dispenser. He
discloses a dual outlet air freshener at column 2, lines 42--49. He discloses
that the air freshener may be passive (non-powered) at column 5, lines 29--
53, and column 6, lines 45---61.
It would have been obvious to one of ordinary skill in the art at the
time the invention was made to substitute the known non-powered air
freshener dispenser device of He for the known night light device of Hazani.
35 US.C. § 112, second paragraph
We also reject claim 17 under 35 U.S.C. § 112, second paragraph, as
being indefinite. Claim 17, which depends from claim 1, recites "the power
connector" which lacks antecedent basis in claim 1. Rather, the power
connector is first introduced in claim 15.
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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
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Application 13/551,539
by the examiner, in which event the proceeding will be remanded
to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1, 3, 4, and 6-22 as being unpatentable under 35 U.S.C. § 103(a).
(2) We reject claims 1, 11, and 12 as being unpatentable under
35 U.S.C. § 103(a).
(3) We reject claim 17 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
(4) On this record, claims 3, 4, 6-10, 13-16, and 18-22 have not been
shown to be unpatentable. 7
(5) Claims 1, 11, 12, and 17 are not patentable.
DECISION
The Examiner's rejections of claims 1, 3, 4, and 6-22 are reversed.
Claims 1, 11, 12, and 17 are newly rejected.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED
37 C.F.R. § 41.50(b)
7 We leave it to the Examiner to review the patentability of claims 3, 4, 6-
10, and 13-22 over the new references and previously applied references.
11