Ex Parte Carney

Patent Trials and Appeals Board

Mar 21, 2019

14362261 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/362,261 06/02/2014
105718 7590 03/25/2019
SCA Hygiene Products AB
c/o Buchanan Ingersoll & Rooney, PC
1737 King Street, Suite 500
Alexandria, VA 22314
FIRST NAMED INVENTOR
Joshua Carney
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.
1018798-000767 6264
EXAMINER
FOXX, CHICO A
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
03/25/2019 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA CARNEY
Appeal2018-007504
Application 14/362,261 1
Technology Center 2600
Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and
IFTIKHAR AHMED, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 5-10, 12-16, and 18-27, which are all of the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to "monitoring use of an absorbent article,"
such as "incontinence pads, diapers etc." Spec. 1:5-11.
1 According to Appellant, the real party in interest is SCA Hygiene Products
AB. App. Br. 2.
Appeal2018-007504
Application 14/362,261
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A method for monitoring use of an absorbent product worn by
a user, wherein the absorbent product is a male or female
incontinence protector, a sanitary pad, a diaper with tape
fastener, a pant diaper or a belted diaper, the method comprises
the steps of:
obtaining, by a mobile device, capacity information
indicative of the amount of urine and/or faeces that can be
absorbed by the absorbent product,
after obtaining the capacity information, detecting, by an
odour sensor device capable of being carried by the user,
wherein said odour sensor device is separate and external from
the absorbent product and configured to communicate with said
mobile device of the user, at least one chemical indicative of a
presence of urine and/or faeces in the absorbent product,
transmitting, from said odour sensor device to said mobile
device a signal indicative of said detection, wherein said signal
is indicative of the concentration of the at least one detected
chemical,
receiving, in said mobile device, the signal indicative of
the detection, and
providing, by said mobile device, product-related
information based on both said signal received from the odour
sensor device and said capacity information.
Rejection
Claims 1, 3, 5-10, 12-16, and 18-27 stand rejected under 35 U.S.C.
§ I03(a) as obvious over the combination of Barda (US 2013/0254141 Al;
Sept. 26, 2013), Davallou (US 5,709,222; Jan. 20, 1998), and Hong
(US 2013/0018231 Al; Jan. 17, 2013). Final Act. 2-3.
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Appeal2018-007504
Application 14/362,261
ISSUE
Did the Examiner err in finding a person of ordinary skill in the art
would have had a reasonable expectation of success in replacing Barda's
internal moisture sensor with Davallou's external gas sensor for claim 1?
ANALYSIS
Independent claims 1, 12, and 15 recite "an absorbent product," such
as a diaper, and "an odour sensor device ... separate and external from the
absorbent product."
Barda and Davallou both disclose detecting urine and solid waste in
an absorbent product such as a diaper, but Barda teaches a wetness sensor
internal to the diaper whereas Davallou teaches a gas sensor external to the
diaper (e.g., a device clipped to the diaper or on a crib). Final Act. 3-5
(citing Barda ,r 193, Fig. 1; Davallou 2:33-38, 2:53-54, Figs. 8-9). The
Examiner determines that "it would have been obvious to a person of
ordinary skill in the art to use a sensor design as taught by Davallou [i.e., a
gas sensor external to the absorbent product] ... with the system as taught
by Barda." Id. at 5.
The Supreme Court has instructed that "[ t ]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). Moreover, "case law is clear that obviousness cannot
be avoided simply by a showing of some degree of unpredictability in the art
so long as there was a reasonable probability of success." Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). "The presence or
absence of a reasonable expectation of success is a question of fact."
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Appeal2018-007504
Application 14/362,261
Cumberland Pharms. Inc. v. Mylan Institutional LLC, 846 F.3d 1213, 1222
(Fed. Cir. 2017).
Here, Appellant argues there would be no reasonable expectation of
success for the Examiner's proposed combination because a gas sensor and
wetness sensor are different:
[T]he Davallou gas sensor detects different chemical species
( e.g., CONH2, NH3, H2S and RSH) from those described in Barda
et al., e.g., water. One of ordinary skill in the art understands that
water is not volatile ( or gas) under ambient conditions. The Final
Rejection fails to provide a factual finding that the Davallou gas
sensor would be reasonably expected to detect the above noted
properties intended in Barda et al. ( e.g., moisture resulting from
wetness events in an absorbent article). In the absence of a
reasonable expectation of success, one of ordinary skill in the art
would not have been motivated to modify Barda et al. by
substituting the gas sensor of Davallou which is separate and
external from the absorbent product and which detects airborne
or gaseous chemicals, for the sensor of Barda et al., which is
embedded in the absorbent article and detects moisture contained
therein.
App. Br. 8.
We are not persuaded by Appellant's argument. Contrary to
Appellant's assertion (App. Br. 10), Barda's wetness sensor and Davallou's
gas sensor accomplish the same function of detecting a dirty diaper.
Appellant's own Specification and the prior art confirm that wetness sensors
and gas/odor sensors were well-known techniques to accomplish the same
function of detecting a dirty diaper. E.g., Spec. 1 :20-29 ("There are several
known arrangements for monitoring urinary or faecal voiding," including
"wetness sensors" and "smell sensors"); see also Ans. 4 ( citing Richardson
,r,r 5---6 (US 2013/0110064 Al; May 2, 2013) ("various types of moisture,
wetness or bowel movement indicators have been suggested for use in
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Appeal2018-007504
Application 14/362,261
absorbent articles in order to detect the presence" of "urine insults" or
"bowel movement insults," such as "a wetness indicator" using "conductive
materials ... incorporated into the absorbent article" or "a sensor for odor
detection")). It takes an ordinary parent, not an expert, to know that sniffing
the outside of a diaper and feeling the diaper are both straightforward ways
of determining whether a diaper is dirty. Appellant has provided no reason
to think that a person of ordinary skill in the art (e.g., someone whose job it
was to think about dirty diaper detection on a regular basis) would not have
had a reasonable expectation of success in replacing Barda's internal
wetness sensor with Davallou's external gas sensor in order to detect a dirty
diaper. Nor has Appellant provided any reason to think that a gas sensor
(smelling the diaper) would have provided any unpredictable or unexpected
result compared to a wetness sensor (feeling the diaper). See Honeywell
Int'! Inc. v. Mexichem Amanco Holding S.A., 865 F.3d 1348, 1356 (Fed. Cir.
201 7) ("Even when presenting evidence of unexpected results to rebut an
Examiner's prima facie case for obviousness, ... the patent owner need only
establish that the results would have been unexpected to one of ordinary skill
at the time of invention") ( quotations omitted).
We have only considered those arguments that Appellant actually
raised in the briefs. Arguments that Appellant could have made but chose
not to have not been considered and are deemed waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2013).
Accordingly, we sustain the rejection of independent claims 1, 12, and
15, and claims 3, 5-10, 13, 14, 16, and 18-27, which Appellant argues are
patentable for similar reasons. See App. Br. 11; 37 C.F.R. § 4I.37(c)(l)(iv).
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Appeal2018-007504
Application 14/362,261
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1, 3, 5-10, 12-16, and 18-27. 2
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(±).
AFFIRMED
2 Appellant identifies claims 21 and 22 as "dependent claims." App. Br. 11;
see also Fee Worksheet (June 22, 2017) (identifying the number of
independent claims as 3, not 5). Claims 21 and 22 each recite an apparatus
comprising a computer program that when executed performs the method
according to claim 15. However, claims 21 and 22 may not necessarily
require that the computer program ever actually be executed and hence may
not require that the method of claim 15 actually be performed. Therefore,
claims 21 and 22 may fail to specify a further limitation of the subject matter
of claim 15, as required for dependent claims under§ 112, fourth paragraph.
Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006);
see also MPEP § 608.0l(n)(II). Alternately, to the extent claims 21 and 22
do require performance of the method in claim 15, then claims 21 and 22
may be invalid as indefinite for mixing method and apparatus claims. The
Examiner therefore may wish to consider whether claims 21 and 22 are
either improper dependent claims or indefinite. We note, however, that
Appellant is not precluded from declaring claims 21 and 22 to be
independent claims and paying any appropriate fees.
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