Ex Parte Mainini et al

Patent Trial and Appeal Board

Oct 31, 2016

12712749 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121712,749 02/25/2010 Christopher E. Mainini
22465 7590 11/02/2016
PITTS & LAKE P C
PO BOX 51295
KNOXVILLE, TN 37950-1295
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.
34231.00 3331
EXAMINER
POON, PETER M
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
docketing@pl-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER E. MAININI and CLIFTON P. BRICK
Appeal2013-005697
Application 12/712,749 1
Technology Center 3600
Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-25. We have jurisdiction over the appeal under
35 U.S.C. § 6(b). An oral hearing was held on October 17, 2016.
We AFFIRM-IN-PART.
1 According to the Appellants, "[t]he real party in interest in this appeal is
Radio Systems Corporation." Appeal Br. 1.
Appeal2013-005697
Application 12/712,749
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 11, and 22 are the independent claims on appeal. Claim 11,
reproduced below, is illustrative of the subject matter on appeal.
11. A stimulus delivery probe for delivering an electrical
stimulus to an animal, said stimulus delivery probe comprising:
a base member adapted to be mechanically secured to an
animal training device, the animal training device being adapted
to be carried by the animal and capable of generating the
electrical stimulus;
a compliant member mechanically secured to said base
member, said compliant member being in electrical
communication with the animal training device when said base
member is mechanically secured to the animal training device,
said compliant member being electrically conductive and
mechanically compliant to a force between the base member and
the animal; and
a tip member mechanically secured to and in electrical
communication with said compliant member, said tip member
being positioned in physical contact with the animal when the
animal training device is carried by the animal, said tip member
delivering the electrical stimulus to the animal when the animal
training system generates the electrical stimulus.
Rejections
Claims 1, 2, 4-9, 11-17, and 19-25 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Boyd (US 2007/0186871 Al, pub. Aug. 16,
2007).
Claims 3, 10, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Boyd.
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Appeal2013-005697
Application 12/712,749
ANALYSIS
The Appellants request that the rejections be withdrawn because the
Examiner has not properly rejected the claims. Appeal Br. 5. More
specifically, the Appellants assert that "the substance of neither the claim
amendments nor the associated arguments were acknowledged or addressed
in the current action." Appeal Br. 4. However, this request is reviewable by
petition under 3 7 C.F .R. § 1.181 and is not within the jurisdiction of the
Board. See Ans. 4; see also Manual of Patent Examining Procedure (MPEP)
§§ 706.07(c), 1002.02(c)(3)(a), 1201; In re Mindick, 371F.2d892, 894
(CCP A 1967).
Independent claims 1 and 22, and dependent claims 2-10 and 23-25
Independent claim 1 recites "[a] stimulus delivery probe ... for
delivering an electrical stimulus to an animal" including "a compliant
member" and "a compliant member covering disposed about said compliant
member ... and flexible to the extent that it does not restrict the mechanical
compliance of said compliant member." Appeal Br., Claims App.
The Examiner finds that Boyd discloses a stimulus delivery probe for
delivering an electrical stimulus to an animal including: coiled wire 58 that
corresponds to the "compliant member"; and first outboard section 20' and
second inboard section 22', which are affixed together by mating threads 15'
and 17', that correspond to the "compliant member covering." See Final
Act. 2-3; see also Boyd, Fig. 4, paras. 20-22, 26. Further, the Examiner
explains that Boyd's section 20' is made of a soft - and as such, a flexible -
- material (see Ans. 5---6), and that Boyd's material is "flexible to the extent
that it does not restrict the mechanical compliance of said compliant
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Application 12/712,749
member" because the breadth of the claim limitation reads on coiled wire 58
compressing down or extending up when a mechanical force is applied to
section 20'; for example, forces are applied to coiled wire 58 by section 20'
sufficient to flex the soft material of section 20' when section 20' is threaded
up or down relative to section 22' (id. at 7-10).
The Appellants argue that Boyd's first outboard section 20' and
second inboard section 22' fail to correspond to the claimed "compliant
member covering" because Boyd's coiled wire 58 is contained inside and
restricted by the rigidity of Boyd's sections 20' and 22', i.e., the covering
restricts the compliance of the compliant member. See Appeal Br. 5---6;
Reply Br. 2-3. The Appellants' argument is persuasive.
Thus, we do not sustain the Examiner's rejection of independent
claim 1 and dependent claims 2 and 4--9 as anticipated by Boyd. Also, the
Examiner's rejection of dependent claims 3 and 10 fails to remedy the
deficiency in the Examiner's rejection of claim 1. As such, we do not
sustain the Examiner's rejection of dependent claims 3 and 10 as
unpatentable over Boyd. Additionally, independent claim 22 recites
substantially similar language as claim 1 (Appeal Br., Claims App) and the
Examiner's rejection of claim 22 is based on substantially similar findings as
those provided for the rejection of claim 1 (see Final Act. 5). Therefore, we
do not sustain the Examiner's rejection of independent claim 22 and
dependent claims 23-25 as anticipated by Boyd.
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Appeal2013-005697
Application 12/712,749
Independent claim 11 and dependent claims 12-19 and 21
Independent claim 11 recites "[a] compliant member being ...
mechanically compliant to a force between the base member and the
animal." Appeal Br., Claims App.
The Examiner finds that Boyd's base 24 corresponds to the "base
member." Final Act. 3, 4; see also Boyd, para. 21. And, as discussed above,
the Examiner finds that Boyd's coiled wire 58 corresponds to the "compliant
member." Final Act. 2, 4.
The Appellants contend the Examiner fails to identify an element of
Boyd that is "mechanically compliant to a force between the base member
and the animal," as recited in independent claim 11. See Appeal Br. 4. The
Appellants' contention is not persuasive.
The Appellants acknowledge that "Boyd's conductive element ... 58
is stretched, twisted, or compressed when the outboard section 20 is moved
up or down, to conform with the desired length selected by the user." Reply
Br. 2. We agree with the Appellants and determine that the foregoing
acknowledgement offers a position that corresponds to the disputed claim
limitation.
We have considered the remaining arguments presented by the
Appellants in the Briefs and determine that they are not persuasive because
they are not commensurate in scope with the requirements of claim 11.
Thus, we sustain the Examiner's rejection of independent claim 11 as
anticipated by Boyd. For the same reasons, we also sustain the Examiner's
rejections of dependent claims 12-19, which are not argued separately. See
Appeal Br. 9.
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Application 12/712,749
Notably, dependent claim 21 directly depends from claim 19, which
depends from independent claim 11, and recites "said compliant member
covering is electrically insulative." Appeal Br., Claims App. The added
limitation in claim 21 is relevant to an argument advanced by the Appellants
for independent claim 1. See Appeal Br. 5. As discussed above, the
Examiner finds that Boyd's first outboard section 20' and second inboard
section 22' correspond to the "compliant member covering." See Final
Act. 3, 5. The Examiner also finds that Boyd's outboard section 20' is made
out of an electrically insulative material. Ans. 5 (citing Boyd, para. 11 ).
The Examiner's findings are adequately supported. The Appellants advance
an argument specific to a misstatement in the Final Office Action that
identified Boyd's outboard section 20' as being made of a metallic rubber
material (Final Act. 7 (citing Boyd, para. 23)). See Appeal Br. 5. We
determine that this misstatement is merely a harmless error in part because
the Appellants acknowledge that "Boyd describes in paragraph [0020] that
the housing 12 (which includes the outboard section 20 and inboard section
22) is electrically insulative." Id. at 6 (emphasis omitted); see also Reply
Br. 1-2. Thus, we sustain the Examiner's rejection of dependent claim 21 as
anticipated by Boyd.
Dependent claim 20
Claim 20 depends from independent claim 11 and dependent claim 19
and includes a substantially similar limitation as independent claim 1, i.e.,
"wherein said compliant member covering is flexible to the extent that it
does not restrict the mechanical compliance of said compliant member."
Appeal Br., Claims App. Notably, the Examiner's rejection of claim 20 is
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based on substantially similar findings as those provided for the rejection of
claim 1. See Final Act. 4. Therefore, we do not sustain the Examiner's
rejection of dependent claim 20 as anticipated by Boyd.
DECISION
We AFFIRM the Examiner's decision rejecting claims 11-19 and 21.
We REVERSE the Examiner's decision rejecting claims 1-10, 20,
and 22-25.
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-IN-PART
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