Ex Parte Dwyer et al

Board of Patent Appeals and Interferences

May 31, 2012

11419938 (B.P.A.I. May. 31, 2012)

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.
11/419,938 05/23/2006 Michael D. Dwyer H0010226-5822 1191
128 7590 05/31/2012
HONEYWELL INTERNATIONAL INC.
PATENT SERVICES
101 COLUMBIA ROAD
P O BOX 2245
MORRISTOWN, NJ 07962-2245
EXAMINER
FAYYAZ, NASHMIYA SAQIB
ART UNIT PAPER NUMBER
2856
MAIL DATE DELIVERY MODE
05/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL D. DWYER and DEAN R. HELLICKSON
____________________

Appeal 2010-002062
Application 11/419,938
Technology Center 2800
____________________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL

Appellants appeal from the Examiner’s rejection of claims 1-20. We
have jurisdiction under 35 U.S.C. § 6(b).
We Reverse.
Appeal 2010-002062
Application 11/419,938

2

Representative Claim
1. An electronic sensor, comprising:
a unitary device configured to be directly coupled to at
least one component, the unitary device comprising:
a processor;
a processor memory coupled to the processor;
at least one input/output block in communication with the
processor and with at least one external component monitor;
one or more accelerometers in communication with the
processor and coupled directly to the at least one component,
the one or more accelerometers sensing one or more mechanical
vibrations from the at least one component, the one or more
mechanical vibrations oscillating below 1 MHz; and
wherein the processor compares the one or more
mechanical vibrations with a plurality of vibration samples
programmed into the processor memory, each vibration sample
specific to at least one sensor application.
Rejections on Appeal
1. The Examiner rejects claims 1-20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement and
also objected to Appellants’ amendment of March 24, 2008 under 35 U.S.C.
§ 132(a) as introducing new matter into the disclosure and claims.1

1 In accordance with MPEP § 2163.06(II) (2007), we review both the
rejection under 35 U.S.C. § 112, first paragraph, and the objection under
35 U.S.C. § 132(a).
Appeal 2010-002062
Application 11/419,938

3
2. The Examiner rejects claims 15, 17, and 18 under 35 U.S.C.
§ 102(e) as being anticipated by U.S. Patent No. US 6,937,941 B2 issued
Aug. 30, 2005 (“Hala”).
3. The Examiner rejects claims 1-5, 7-14, 16, 19, and 20 under 35
U.S.C. § 103(a) as being unpatentable over Hala.
4. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Hala and U.S. Patent No. US 6,918,747 B2 issued July 19,
2005 (“Comperat”).

ISSUES
1. Does the Examiner err in rejecting claims 1-20 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement and also objected to Appellants’ amendment of March 24, 2008
under 35 U.S.C. § 132(a) as introducing new matter into the disclosure and
claims.
2. Does the Examiner err in finding that Hala discloses “the
unitary device comprising: . . . one or more accelerometers in
communication with the processor and coupled directly to the at least one
component” as recited in claim 1 and commensurately recited in claims 10,
and 15?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.

Appeal 2010-002062
Application 11/419,938

4
ANALYSIS
The 35 U.S.C. § 112, First Paragraph Rejection
Appellants contend that the Examiner’s written description rejection
(35 U.S.C. § 112, first paragraph) of claims 1-20 and new matter objection
(35 U.S.C. § 132(a)) to the amendment of March 24, 2008 are improper.
(App. Br. 4-7.) Specifically, Appellants assert that the Specification as
originally filed explicitly describes the vibration sensor (104) as comprising
(i.e., the vibration sensor includes within its structure) the accelerometers
(208). (App. Br. 6-7 (citing Spec. ¶¶ [0017]-[0018]; Figs. 1 and 2).) We
agree with Appellants for essentially the reasons set forth in the Brief. (App.
Br. 4-7.)
We find the evidence firmly weighs in favor of Appellants’ contention
that the vibration sensor and the accelerometers comprise a single unit – a
“unitary device.” (See App. Br. 6-7; Spec. ¶¶ [0005], [0017]-[0018]; Figs. 1
and 2.) Thus, we find that Appellants’ originally filed Specification would
have reasonably conveyed to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date and also
supports the inclusion/addition of “unitary device” into the claims and
Specification. Accordingly, we reverse the Examiner’s written description
rejection of claims 1-20 and the Examiner’s objection to the March 24, 2008
Amendment.
Claims 15, 17, & 18
With respect to representative claim 15, we agree with Appellants that
Hala fails to disclose “means for sensing” (claim 15) (i.e., accelerometers)
and “means … for processing” (claim 15) (i.e., a processor) in a “unitary
device” directly coupled to a component. (App. Br. 7-8.) We construe the
Appeal 2010-002062
Application 11/419,938

5
recited “unitary device” to mean a single structural unit, not a functional unit
as apparently proffered by the Examiner (Ans. 12). The Examiner fails to
address this limitation (App. Br. 7-8), and Hala describes the transducers
(20/24) (i.e., accelerometers) as being attached directly to a machine and
outputting a signal through a connection (22/26) to a physically separate
monitoring system (10) (Hala, col. 4, ll. 46-63; Fig. 1.)
Accordingly, we reverse the Examiner’s anticipation rejection of
independent claim 15 and dependent claim 17 and 18.
The § 103 Rejection of Claims 1-14, 16, 19, & 20
With respect to claim 1, we agree with Appellants that Hala fails to
teach or suggest accelerometers and a processor in a “unitary device”
directly coupled to a component (App. Br. 8) for the same reasons discussed
with respect to claim 15 (supra). Independent claim 10 includes limitations
of commensurate scope. Dependent claims 2-5 and 7-9 (dependent on claim
1), dependent claims 11-14 (dependent on claim 10), and dependent claims
16, 19, and 20 (dependent on claim 15) stand with their respective base
claims.
With respect to the rejection of dependent claim 6, the addition of
Comperat does not cure the noted deficiencies of Hala. We agree with
Appellants that Hala in combination with Comperat fails to teach or suggest
the recited unitary device. (App. Br. 8-9.)
Accordingly, we reverse the Examiner’s obviousness rejection of
claims 1-14, 16, 19, and 20.2

2 We do not address the issue of whether structurally incorporating
transducers/accelerometers with a processing system would be obvious. See
Appeal 2010-002062
Application 11/419,938

6

CONCLUSIONS OF LAW
Appellants have shown that the Examiner erred in rejecting claims 1-
20 under 35 U.S.C. § 112, first paragraph, and also in objecting to
Appellants’ amendment of March 24, 2008 under 35 U.S.C. § 132(a).
Appellants have shown that the Examiner erred in rejecting claims 15,
17, and 18 under 35 U.S.C. § 102(e).
Appellants have shown that the Examiner erred in rejecting claims 1-
14, 16, 19, and 20 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejection of claims 1-20 under 35 U.S.C.
§ 112, first paragraph, and also the objection to Appellants’ amendment of
March 24, 2008 under 35 U.S.C. § 132(a).
We reverse the Examiner’s rejections of claims 15, 17, and 18 under
35 U.S.C. § 102(e).

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 -20 (2007); Tokai Corp. v.
Easton Enterprises, Inc., 632 F.3d 1358, 1372 (Fed. Cir. 2011):
[T]he claimed subject matter as a whole would have been
obvious . . . . [because ] [e]ach of the components making up
the claimed subject matter existed in the prior art, . . . [and]
[t]here was a recognized need in the prior art . . . that would
have provided one of ordinary skill with a definite reason for
modifying the prior art utility lighters . . . . One of ordinary skill
would thus have been motivated to adapt these utility lighters to
incorporate the automatic safety devices available in the art . . .
.
(Id.) However, in the event of further prosecution, the Examiner should
consider such a rejection,
Appeal 2010-002062
Application 11/419,938

7
We reverse the Examiner’s rejections of claims 1-14, 16, 19, and 20
under 35 U.S.C. § 103(a).

REVERSED

tkl