Edward Jung et al.

Patent Trials and Appeals Board

Nov 13, 2020

12384166 - (D) (P.T.A.B. Nov. 13, 2020)

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.
12/384,166 03/31/2009 Edward K.Y. Jung DS1-0574-US 5361
80118 7590 11/13/2020
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
YOO, REGINA M
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN,
ROBERT W. LORD, MARK A. MALAMUD,
JOHN D. RINALDO JR., and LOWELL L. WOOD JR.
Appeal 2020-000605
Application 12/384,166
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and
LILAN REN, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1

1 This Decision includes citations to the following documents: Specification
filed March 31, 2009 (“Spec.”); Final Office Action mailed November 1,
2018 (“Final Act.”); Appeal Brief filed May 14, 2019 (“Appeal Br.”);
Examiner’s Answer mailed September 3, 2019 (“Ans.”); and Reply Brief
filed November 1, 2019 (“Reply Br.”).
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 30, 32, 33, 35, 39, 43, 71–74, 77, 79–
81, and 92–96. Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
CLAIMED SUBJECT MATTER
The Specification states the invention relates to methods and systems
that may be used for monitoring sterilization status in contexts such as
health-care and manufacturing. Spec. 3. Claim 30, reproduced below, is
illustrative of the claimed subject matter (Appeal Br., Claims Appendix 56):
30. A system comprising:
at least one comparing device including one or more electronic
devices including at least
circuitry configured for detecting one or more sterilization
levels associated with one or more spaces and detecting one
or more sterilization statuses associated with one or more
objects including at least one sterilization status indicative of
at least one contaminant type to which the one or more objects
were exposed, and circuitry configured for comparing the
detected one or more sterilization statuses associated with the
one or more objects to the detected one or more sterilization
levels associated with the one or more spaces including at
least determining whether one or more values associated with
the at least one contaminant type to which the one or more
objects were exposed are within at least one range associated
with the one or more sterilization levels; and
at least one responding device including one or more electronic
devices including at least

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Deep Science, LLC as the real party
in interest. Appeal Br. 4.
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circuitry configured for responding to one or more signals
indicative of the comparing the detected one or more
sterilization statuses associated with the one or more objects
to the detected one or more sterilization levels associated with
the one or more spaces, wherein the responding includes at
least generating one or more control signals for controlling at
least one sterilization device to sterilize the one or more
spaces and generating one or more signals that change the one
or more sterilization levels associated with the one or more
spaces responsive at least to the sterilization of the one or
more spaces, wherein the one or more spaces comprise one or
more offices or rooms in at least one of a hospital, a
pharmaceutical production facility, a food preparation
facility, a packaging facility, a dental office, a medical office,
an operating room, a veterinary clinic, or a medical
examination room.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Vetter US 4,688,585 August 25, 1987
Wildman et al.
hereinafter
“Wildman”
US 6,727,818 B1 April 27, 2004
Deal US 2002/0085947 A1 July 4, 2002
REJECTIONS
1. The Examiner rejected claims 43 and 95 under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as
being indefinite. Final Act. 3.
2. The Examiner rejected claims 30, 32, 33, 35, 43, 73, 74, 77, 79,
80, and 93–95 under pre-AIA 35 U.S.C. § 102(b) as anticipated
by Vetter. Final Act. 3–9.
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3. The Examiner rejected claims 30, 32, 33, 35, 39, 43, 73, 74, 77,
79–81, and 92–95 under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Deal. Final Act. 10–16.
4. The Examiner rejected claims 39, 71, 72, and 96 under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Vetter and Wildman.
Final Act. 17–20.
5. The Examiner rejected claims 71, 72, and 96 under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Deal and Wildman. Final
Act. 20–23.
OPINION
Rejection 1
Appellant does not present any arguments with respect to the
Examiner’s rejection of claims 43 and 95 as being indefinite. Rather,
Appellant indicates an intent to resolve the rejection after resolution of the
Appeal. Appeal Br. 4–5.
Accordingly, we summarily sustain the Examiner’s rejection of claims
43 and 95 under 35 U.S.C. § 112.

Rejection 2
We limit our discussion to claim 30, which is sufficient for disposition
of this rejection.

The Examiner’s Rejection
In rejecting claim 30 as anticipated by Vetter, the Examiner found,
inter alia, that Vetter discloses a system including control device 4,
operating mechanism 5, electrooptical sensor 8, sensing element 31, reader
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12, computer 19, CPU 100, and reader 102 corresponding to the at least one
comparing device recited in claim 30. Final Act. 3; Vetter col. 5, ll. 13–57;
col. 6, ll. 20–34. The Examiner found Vetter discloses circuitry (within 5,
12, via 102 and 100) that is capable of detecting one or more sterilization
levels associated with one or more spaces and detecting one or more
sterilization statuses associated with one or more objects. Id. at 3–4. In
particular, the Examiner found Vetter discloses circuitry within operating
mechanism 5, reader 12, via reader 102 and CPU 100 for detecting one or
more objects including at least one sterilization status indicative of at least
one contaminant type to which the one or more objects were exposed. Id.

Appellant’s contentions
Appellant contends, inter alia, that Vetter does not disclose detecting
one or more sterilization levels associated with one or more spaces, because
Vetter performs only a fixed preset program for cleaning an object, and the
only detecting that is done is the shape and position of an object that is put
into the housing. Appeal Br. 14–24. As such, Appellant argues the
Examiner did not demonstrate that Vetter discloses a comparing device with
circuitry configured to detect at least one status indicative of at least one
contaminant type to which the one or more objects were exposed. Id. at 16.

Issue
Did the Examiner reversibly err in finding Vetter discloses electronic
devices including circuitry that is capable of detecting at least one
sterilization status indicative of at least one contaminant type to which one
or more objects were exposed as recited in claim 30?
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Discussion
We are persuaded by Appellant’s arguments. “To anticipate a claim,
a prior art reference must disclose every limitation of the claimed invention,
either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997). In this case, we are of the view that the Examiner has not
provided sufficient support for the position that Vetter discloses every
limitation of claim 30.
In particular, claim 30 recites a comparing device that is configured
for detecting one or more sterilization statuses associated with one or more
objects, and requires at least one sterilization status to be indicative of at
least one contaminant type to which the one or more objects were exposed.
The Examiner did not make a finding that Vetter expressly discloses this
limitation. Instead, the Examiner “deems that Vetter’s component(s) is/are
capable of performing the functions claimed” and “points out that the
‘sterilization levels’ and ‘sterilization statuses’ are not structural features but
rather a type of signal and/or information and these do not further limit an
apparatus claim.” Ans. 23–24. Thus, the Examiner’s position appears to be
that Vetter inherently discloses detecting a sterilization status of an object
indicative of at least one contaminant type.
Although the Examiner acknowledges that prior art elements must
only be capable of performing the functions specified in the claims (Ans.
26), we agree with Appellant that the Examiner has not provided sufficient
support for the position that Vetter’s components are capable of detecting at
least one sterilization status indicative of at least one contaminant type.
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That is, Vetter discloses an electrooptical sensor 8, which Vetter
discloses senses which object is in the housing for cleaning according to its
shape. Vetter, col. 3, ll. 39–45, col. 5, ll. 13–16. Although the Examiner
points to the Specification for support that Vetter uses the same technology
as Appellant (Ans. 23, citing Spec. 8, ll. 2–6, 9–11, 24–26), we do find
adequate support therein for the Examiner’s position. The Specification
discloses that the comparing units can detect “fluorescent indicators, radio
frequency signals, magnetic properties, color changes of chemical indicators,
bar codes, and the like.” Spec. 8, 10.
Such technologies would not only include types of signals or
information, but also would include the presence of suitable sensors to
provide the detecting function for at least one contaminant type as recited in
claim 30. Because Vetter only discloses the electrooptical sensor senses the
presence of an object and its shape, the Examiner’s position that the
electrooptical sensor disclosed in Vetter would necessarily be capable of
detecting a sterilization status of an object indicative of at least one
contaminant type is not sufficiently supported.
As a result, we reverse the Examiner’s rejection of claim 30 and
claims dependent therefrom as anticipated by Vetter.

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Rejection 3
We limit our discussion to claim 30, which is sufficient for disposition
of this rejection.

The Examiner’s Rejection
The Examiner found, inter alia, that Deal discloses a system including
a UV-C sensing array and stamps (motion detectors 12, door contacts 24,
control box 10) including circuitry capable of detecting one or more
sterilization levels associated with one or more spaces and detecting one or
more sterilization statuses associated with one or more objects. Final Act.
10, citing Deal Figs. 1–5, ¶¶ 16–35. The Examiner found Deal’s UV-C
sensor array includes circuitry capable of detecting one or more sterilization
statuses of the objects indicative of at least one contaminant type to which
the one or more objects were exposed. Id.

Appellant’s Contentions
Appellant contends, inter alia, that Deal detects an amount of UV-C
reflected back to the system of Deal, which is not detecting sterilization
statuses associated with one or more objects and indicative of at least one
contaminant type to which the one or more objects were exposed as recited
in claim 30. Appeal Br. 31–32. According to Appellant, the system of Deal
operates independently of whether any objects are located within a room that
is subject to treatment by the system of Deal. Id. Appellant argues the
portions of Deal cited by the Examiner do not support the Examiner’s
position that Deal discloses a comparing device that includes circuitry
configured for detecting one or more sterilization statuses where at least one
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sterilization status is indicative of at least one contaminant type to which the
one or more objects were exposed. Id. at 32–37.

Issue
Did the Examiner reversibly err in finding Deal discloses electronic
devices including circuitry that is capable of detecting at least one
sterilization status indicative of at least one contaminant type to which one
or more objects were exposed as recited in claim 30?

Discussion
We are persuaded by Appellant’s arguments. As discussed above,
anticipation requires a prior art reference to disclose every limitation of the
claimed invention, whether expressly or inherently. Schreiber, 128 F.3d at
1477. We are of the view that the Examiner has not provided sufficient
support for the position that Vetter discloses every limitation of claim 30.
Similar to the discussion above, the Examiner “deems that Deal’s
component(s) is/are capable of performing the functions claimed” and
“points out that the ‘sterilization levels’ and ‘sterilization statuses’ are not
structural features but rather a type of signal or information and these do not
further limit an apparatus claim.” Ans. 28. As discussed above, the
Specification discloses that the comparing units can detect “fluorescent
indicators, radio frequency signals, magnetic properties, color changes of
chemical indicators, bar codes, and the like.” Spec. 8, 10.
Deal discloses an Ultraviolet Area Stabilizer including an UV-C
sensor array, a bank of basic stamps, and motion detectors. Deal ¶ 17. Deal
discloses a UV-C generator in the form of a bank of mercury bulbs generate
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levels of UV-C, and after the bulbs have reached a steady state of output, the
UV-C sensor array determines the darkest area, which is the area reflecting
the lowest level of UV-C back to the sensors. Id. at ¶¶ 8, 9, 33. Deal
discloses the Ultraviolet Area Stabilizer self modifies bactericidal levels of
UV-C reflected back thereto until bactericidal levels of UV-C are received to
ensure sterilization. Id. at ¶ 33. Thus, Deal does not expressly disclose UV-
C light is used to detect a contaminant type of an object. Rather, Deal
discloses monitoring the level of UV-C light reflected back to the sensors.
Deal does not disclose that such reflections are in any way related to the type
of contaminant to which an object has been exposed.
Although the Specification indicates a variety of technologies may be
utilized to detect contaminant types as discussed above, it does not
specifically disclose the use of UV-C light in order to perform this function.
Indeed, the Specification discloses the use of UV light in the sterilization
unit, and not the comparing unit. Spec. 17. Thus, based on this record, the
Examiner’s position that the components disclosed in Deal would be capable
of performing the functions recited in claim 30 is not sufficiently supported.
Accordingly, we reverse the Examiner’s rejection of claim 30 and the
claims dependent therefrom as anticipated by Deal.

Rejections 4 and 5
For claims 39, 71, 72, and 96, the claims subjected to Rejections 4 and
5, the Examiner relied on Wildman for the use of radiofrequency signals in
order to provide one or more alert devices in the system of Vetter or Deal to
provide information about an object. Final Act. 20, 23. Although the
Examiner found Wildman discloses a comparing device including circuitry
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configured for detecting at least one sterilization status indicative of at least
one contaminant type (Final Act. 18, 22), we agree with Appellant (Appeal
Br. 45–46, 50–51), that Wildman fails to disclose such limitations, and as a
result, fails to remedy the deficiencies of both Vetter and Deal discussed
above.
In this regard, the caregiver badge 112, equipment badges 113, faucet
monitoring device 106, sensors associated with handwashing devices 108,
sensors 118 operable to communicate with caregiver badges 112, soap
dispenser sensors 120, and master station 129 disclosed in Wildman and
relied on by the Examiner (Final Act. 19, 21) merely indicate presence,
periods, or usage amounts of water and soap. Wildman, col. 3, l. 35– col. 4,
l. 16, col. 5, ll. 53–62. Thus, Wildman does not disclose detecting a
sterilization status indicative of at least one contaminant type in order to
make up for the deficiencies of Vetter and Deal.
Accordingly, we reverse the Examiner’s rejections of claims 39, 71,
72, and 96.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
43, 95 112 indefinite 43, 95
30, 32, 33,
35, 43, 73,
74, 77, 79,
80, 93–95
102 Vetter 30, 32, 33,
35, 43, 73,
74, 77, 79,
80, 93–95
30, 32, 33,
35, 39, 43,
102 Deal 30, 32, 33,
35, 39, 43,
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73, 74, 77,
79–81, 92–
95
73, 74, 77,
79–81, 92–
95
39, 71, 72,
96
103(a) Vetter, Wildman 39, 71, 72,
96
71, 72, 96 103(a) Deal, Wildman 71, 72, 96
Overall
Outcome
43, 95 30, 32, 33,
35, 39, 71–
74, 77, 79–
81, 92–94,
96
TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED IN PART