Ex Parte Duesterhoft et al

Patent Trial and Appeal Board

Mar 26, 2018

13770149 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131770,149 02/19/2013
44765 7590 03/28/2018
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg.4
Bellevue, WA 98005
FIRST NAMED INVENTOR
Paul Duesterhoft
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.
0212-002-001-000000 5630
EXAMINER
MERKOULOV A, OLGA VLADIMIROVNA
ART UNIT PAPER NUMBER
2692
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
ISFDocketlnbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAUL DUESTERHOFT, RODERICK A. HYDE,
JORDIN T. KARE, STEPHEN L. MALASKA,
ROBERT C. PETROSKI, and LOWELL L. WOOD, JR.
Appeal2017-002683
Application 13/770, 149
Technology Center 2600
Before THU A. DANG, STEPHEN C. SIU, and
MATTHEW J. McNEILL, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
ofclaims 1---6, 11, 12, 16, 18, 19,25,27-30,32,33,35,38--40,44,47,52-
54, 61, 62, 71, 72, 75, 79-81, 83, 85-88, 90, 93, 94, and 98-100. Claims 7-
10, 13-15, 17,21-24,26,31,34,36,37,41--43,45,46,48-51,55---60,63-
70, 73, 74, 76-78, 82, 84, 89, 91, 92, and 95-97 were previously canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
1 In a prior Decision, Appeal 2016-006372, we affirmed the Examiner's
rejections of the claims in co-pending Application No. 13/770,226.
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Application 13/770, 149
We AFFIRM.
A. INVENTION
According to Appellants, the invention relates to "a device" which
includes "a hand-holdable housing carrying a writing element, a cleanliness
sensor, and a cleanliness notification circuit" (Spec. i-f 10).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A device comprising:
a hand-holdable housing carrying a writing element, a
cleanliness sensor, and a cleanliness notification circuit;
the writing element configured to form a mark on a surface in
response to a touch or movement of the writing element with
respect to the surface;
the cleanliness sensor configured to detect an indicator of
a pathogen present on a hand of a person holding the hand-
holdable housing; and
the cleanliness notification circuit configured to output a
signal responsive to the detected indicator of a pathogen on the
hand of the person.
C. REJECTIONS
1. Claims 1---6, 11, 12, 16, 18-20, 25, 27-30, 32, 33, 35, 38--40, 44, 47,
52-54, 61, 62, 71, 72, 75, 79-81, 83, 85-88, 90, 93, 94, and 98-100 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Bolling (US
2008/0042854 Al; published Feb. 21, 2008), Black (US 2006/0023922 Al;
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Application 13/770, 149
published Feb. 2, 2006), and Martin et al. (US 2006/0134613 Al; published
June 22, 2006) 2.
2. Claims 1-6, 11, 12, 16, 18, 19, 25, 27-30, 32, 33, 35, 38--40, 44, 47,
52-54, 61, 62, 71, 72, 75, 79-81, 83, 85-88, 90, 93, 94, and 98-100 stand
provisionally rejected on the ground of nonstatutory double patenting over
claims 1-3, 5, 6, 8-12, 15-17, 20, 21, 27-38, 41-53, 55, 56, and 58-61 of
copending Application No. 13/770,226.3
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
that the combination of Bolling, Black, and Martin teaches or suggests a
"hand-holdable housing carrying a writing element, a cleanliness sensor, and
a cleanliness notification circuit," wherein the cleanliness sensor is
"configured to detect an indicator of a pathogen present on a hand of a
person hold the hand-holdable housing" (claim 1 ).
2 As the Examiner points out, claim 20 is currently active in the Application
but Appellants do not address the rejection of the claim in the Appeal Brief.
On this record, we summarily sustain the rejection of claim 20.
3 Panels have the flexibility to reach or not reach provisional double-
patenting rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010)
(precedential). However, although Appellants err in stating that the double-
patenting rejections are "not before the Board" wherein "no action is
required by Appellant at the present time" (App. Br. 26), because we have
the flexibility to reach the rejection, we decide to not reach the merits of the
Examiner's provisional nonstatutory obviousness-type double patenting
rejection of the claims.
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Bolling
1. Bolling discloses an electronic sensor configured to be carried by a
person and to be used by the person to detect a cleanliness state of the
person's hands (Abst.). In particular, Bolling discloses an indicating device
configured to be carried by a person, and the indicating device and the
sensor together are capable of detecting a cleanliness state of the person's
hands and providing an indicator of the cleanliness state (i-f 5). For example,
an identification device such as a badge is provided with a sensor to be used
to detect a cleanliness state of the person's hands, and a visible indicator to
indicate the cleanliness state (Abst.).
Black
2. Black discloses a stylus-shaped identity authentication device,
wherein a fingerprint sensor is disposed within the grip of the stylus (Abst.).
IV. ANALYSIS
35 US.C. § 103(a)
Appellants contend that "the proposed modification of providing the
Bolling device 'shaped as a stylus shown by Black' renders the device of
Bolling unsatisfactory for its intended purpose of using 'social pressure
associated with being identified easily as not having disinfected hands .. "'
(App. Br. 18). According to Appellants, "health care workers are not
required to carry a stylus for any reason" (id. at 19). Further, Appellants
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contend "a stylus carried by a worker need not be visible to others in the
health care environment" (id.), unlike Bolling's identification badge.
Appellants also contend that, although the Examiner finds that it
would have been obvious "to use a pathogen detection shown by Martin et
al. in the device of Bolling which detects cleanliness ifthe device is shaped
as a stylus shown by Black," "Bolling teaches away from making the
proposed modification to the device of Bolling" because such proposal
would be "providing the disinfection determining function of Bolling in a
separate device (a stylus shown by Black) that the worker is expected to
carry" (id. at 21 ). In particular, according to Appellants, Bolling teaches that
"providing the disinfection determining function within the same badge
make it more likely that the worker will use that function than if the function
were provided in a separate device" (id.).
We have considered all of Appellants' arguments and evidence
presented. However, we are unpersuaded by Appellants' contentions
regarding the Examiner's rejections of the claims. We find no error with the
Examiner's combination of the references and the conclusion that the claims
would have been obvious over the combined teachings.
Bolling discloses a housing, such as a hand-held ID badge to be
carried by a person, the housing comprising an electronic sensor to detect the
cleanliness state of the person's hands and a device to provide an indication
of the cleanliness state (FF 1). We find no error with the Examiner's
reliance on Bolling for teaching and suggesting "a hand-holding housing"
carrying "a cleanliness sensor, and a cleanliness notification circuit,"
wherein the cleanliness sensor" is "configured to detect an indicator of a
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pathogen present on a hand of a person hold the hand-holding housing," as
recited in claim 1. Final Act. 3.
Thus, we find that the only clear difference between Bolling and the
contested limitation is that Bolling's ID device housing is not a hand-holding
housing carrying a "writing element" in addition to the cleanliness sensor
and the cleanliness notification circuit (claim 1 ).
However, we agree with the Examiner's reliance on Black for
teaching and suggesting an "ID device" as a "hand-holdable" housing
comprising a "writing element with a sensor" (Ans. 4; FF 2). Further, we
find no error with the Examiner's conclusion that it would have been
obvious to apply Bolling's teaching of providing cleanliness notification to
the hand-holding housing of Black (Final Act. 8-9).
Although Appellants contend that it would not have been obvious to
combine Bolling with the teachings of Black because "providing the Bolling
device 'shaped as a stylus shown by Black' renders the device of Bolling
unsatisfactory for its intended purpose of using 'social pressure associated
with being identified easily as not having disinfected hands .... "' (App. Br.
18-19), Appellants appear to view the combination in a different perspective
than that of the Examiner. The issue here is not whether one would have
bodily incorporated the entire device of Black into the entire device of
Bolling, thus providing the badge of Bolling shaped as a stylus, requiring the
healthcare worker to carry the stylus visibly (id.). Rather, the issue here is
whether the skilled artisan, upon reading Bolling's teaching of providing a
detector for detecting the cleanliness of the hand of the person holding the
hand-holding housing (FF 1 ), would have found it obvious to modify
Black's teaching of a housing comprising a stylus with a sensor (FF 2) to
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include a cleanliness sensor to detect the cleanliness of the hand holding the
stylus-carrying housing. Here, we find that providing a cleanliness detector
for detecting the cleanliness of the hand holding housing (FF 1) such as the
housing comprising the stylus of Black (FF 2) is no more than a simple
arrangement of old elements, with each performing the same function it had
been known to perform, yielding no more than one would expect from such
an arrangement. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Appellants have presented no evidence that applying a cleanliness
sensor such as that provided in Bolling to Black's housing comprising a
stylus was "uniquely challenging or difficult for one of ordinary skill in the
art" or "represented an unobvious step over the prior art." See Leapfrog
Enters., Inc. v. Fisher Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 419-21). Nor have Appellants presented evidence
that the claimed combination of known elements would have yielded more
than expected results.
Although Appellants contend "Bolling teaches away from making the
proposed modification to the device of Bolling" because such proposal
would be "providing the disinfection determining function of Bolling in a
separate device (a stylus shown by Black) that the worker is expected to
carry (App. Br. 21 ), again, Appellants are looking at the combination from a
different perspective of the Examiner. Here, we find that Bolling does not
criticize, discredit, or otherwise discourage investigation into the claimed
solution of providing a cleanliness sensor into a housing to the hand-held
housing comprising a stylus as that of Black. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004).
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We are also unpersuaded by Appellants' hindsight contentions (App.
Br. 8). Here, we find that Appellants' invention is simply a modification of
familiar prior art methods of header compression, which would have realized
a predictable result to the skilled artisan. The skilled artisan is "[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton." KSR
Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007). A rejection is proper
as long as it takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made, and does not
include knowledge gleaned only from the applicant's disclosure. In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)).
On this record, we find no error with the Examiner's ultimate legal
conclusion that it would have been obvious to the skilled artisan at the time
the invention was made to combine the teachings of Bolling and Black, in
further view of Martin. Accordingly, we find no error in the Examiner's
rejection of independent claim 1 and all claims falling therewith, which were
not separately argued (Ans. 25-26).
V. CONCLUSION AND DECISION
We affirm the Examiner's rejections of claims 1---6, 11, 12, 16, 18, 19,
25,27-30,32,33,35,38--40,44,47,52-54,61,62, 71, 72, 75, 79-81, 83,
85-88, 90, 93, 94, and 98-100 under 35 U.S.C. § 103(a).
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).
AFFIRMED
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