Ex Parte Farinella et al

Board of Patent Appeals and Interferences

Nov 17, 2010

11775369 (B.P.A.I. Nov. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MAUREEN M. FARINELLA and JOSEPH A. FARINELLA
____________________

Appeal 2009-009543
Application 11/775,3691
Technology Center 2800

____________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Farinella & Associates, LLC.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009543
Application 11/775,369

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to a bookmark including a header having
an integrated electronic timer circuit to track reading time. The bookmark
includes a flat substrate coupled to a header. The header further includes a
display for displaying the timer count value and a plurality of control buttons
for controlling the electronic timer. The electronic timer includes a memory
for storing timer count values for individual and cumulative reading
sessions. The header also includes a light source and a sensor to control the
electronic timer that can sense external conditions such as light or touch.
The substrate may contain a magnifying viewing port (Abstract).
Claim 1 is exemplary:
1. A bookmark having an integrated electronic timer circuit, comprising:
a substrate;
a header integral with the substrate, the header including a display and
control panel; and
an electronic timer circuit housed within the header for receiving
commands from the control panel and providing a timer signal to the
display, the electric timer circuit including,
(a) an oscillator for generating a clock signal,
(b) a timer receiving the clock signal to count elapsed time, the
timer being configurable to track individual, incremental and cumulative
times for each of a plurality of readers and for each of a plurality of books
for each of the plurality of readers,
(c) a memory circuit coupled to the timer for storing the
individual, incremental and cumulative times and calendar date and time of
reading sessions for each of the plurality of readers,
( d) a control interface having an input coupled to the control
panel on the header and an output coupled to the timer, wherein the control
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interface receives commands to start time and stop time and reverse counting
direction,
(e) an audible alarm coupled to the timer for announcing a time
sequence, the audible alarm being selectable to produce tones, chimes,
melodies, and voices, and
(f) a display interface having an input coupled to the timer and
an output coupled to the time display on the header.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mooney US 4,280,209 Jul. 21, 1981
Tanaka US 5,382,053 Jan. 17, 1995
Ho US 6,024,043 Feb. 15, 2000
Yao US 6,424,984 B1 Jul. 23, 2002
McMillan US 2004/0008589 A1 Jan. 15, 2004

Claims 1-5, 9-12, 14-20, and 22-26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yao in view of McMillan, Mooney, and
Appellants’ Admitted Prior Art (APA).3
Claims 6-7 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yao in view of McMillan, Mooney, APA, and Tanaka.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yao in view of McMillan, Mooney, APA, and Ho.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yao in view of McMillan, Mooney, APA, and Tanaka.

3 Additional rejection of claims 19-20 and 22-25 under 35 U.S.C. § 103(a) as
being unpatentable over Yao in view of McMillan, Mooney, and APA
mentioned by Appellants is included within this first rejection (App. Br. 3).
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Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed July 1, 2008) and the Examiner’s
Answer (mailed September 23, 2008), for their respective details.

ISSUES
Appellants contend that none of the references teaches or suggests a
timer that "is configurable to track individual, incremental and cumulative
times for each of a plurality of readers and for each of a plurality of books
for each of the plurality of readers" (App. Br. 14). Appellants argue that the
Yao reference cannot be programmed or otherwise configured to provide the
claimed timer (App. Br. 16). Appellants further assert that none of the
references discloses a memory circuit coupled to the timer for storing the
individual, incremental and cumulative times and calendar date and time of
reading sessions for each of the plurality of readers as required (App. Br.
17). In addition, Appellants contend that none of the references teaches or
suggests an audible alarm coupled to the timer for announcing a time
sequence (App. Br. 18). Finally, Appellants argue that because the
references describe systems that are unrelated to the subject matter of the
present claims and solve unrelated problems, the references are non-
analogous prior art references and cannot be relied upon by the Examiner
(App. Br. 18).
Appellants’ contentions present us with the following four issues:
1. Do the references disclose a bookmark having an integrated
electronic timer circuit that includes a timer that is “configurable to track
individual, incremental and cumulative times for each of a plurality of
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readers and for each of a plurality of books for each of the plurality of
readers”?
2. Do the references disclose a bookmark having an electronic timer
circuit that includes a memory?
3. Do the references disclose a bookmark having an electronic timer
circuit that includes an audible alarm?
4. Are the references from non-analogous arts?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. At the beginning of a reading session, the reader pushes the
reset button to set the timer and display to zero. The reader then presses the
start button to start the timer count. The present timer count in minutes and
seconds, current calendar day, time of day, and other useful information are
displayed on the display panel. The reader is enabled to recall from memory
previous or cumulative timer counts (Spec. ¶ [00021]). When the reader
chooses to pause or stop reading for an extended period of time, the reader
may press the stop button to stop the counter and timing. The reader may
adjust a moveable slide on the side of substrate to mark the last sentence
read. The reader may place the bookmark on the current page and close the
book (Spec. ¶[00022]).
Yao
2. Yao discloses an electronic bookmark device that includes
electrical circuitry that incorporates a micro-controller or processor and
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memory store for controlling the output sent to the display screen 6,
responding to input from the keypad 4 and storing the data and instruction
set for the functions performed by the device B (col. 2, ll. 44-50).
3. Yao discloses that the electronic bookmark device includes a
clock key 24 on its control panel which when pressed enables the device to
function as a clock (col. 4, ll. 6-7). In addition, the device includes a
schedule alarm/daily alarm key 25 which when pressed enables the
electronic bookmark device to function as a scheduler/alarm that may be
used to enter reminders or appointments (Fig. 3; col. 4, ll. 13-16).
McMillan
4. McMillan discloses a method and apparatus for timing events
and sub-events such as test taking (Abstract). The apparatus tracks time
spent reading questions from various test booklets and answering
corresponding questions (¶ [0003], [0021], and [0022]). Examples of
various tests for which the apparatus may be used to time the events of test
taking are LSAT, GMAT, MCAT, GRE, and SAT (¶¶ [0021] and 0022]).
5. McMillan discloses an apparatus that provides a timer for
timing an event that includes a display, one or more buttons for allowing a
user to start and stop the timer, and a visual indictor for alerting the user to
an event (¶ [0013]).
6. McMillan discloses that a user of the apparatus is able to set the
amount of time on the test section, set the amount of questions in the section,
set which question is currently being worked on, recall from memory certain
individualized time and data gleaned from earlier practice exams, receive an
end of section warning light, receive a warning light when too much time is
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spent on one question, adjust the warning time or turn the warding light off.
The user can switch between “count up” and “count down” (¶ [0026]).
Mooney
7. Mooney discloses an alarm clock that has the standard alarm of
a loud signal or buzzer like tone (col. 5, ll. 20-22), music, and/or chimes
(col. 9, l. 62-col. 10, l. 19).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416.

ANALYSIS
Claims 1-5, 9-12, 14-20 and 22-26
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 1 recites a timer that “is configurable to track
individual, incremental and cumulative times for each of a plurality of
readers and for each of a plurality of books for each of the plurality of
readers.” Independent claims 10, 15, 19, and 22 each recite a claim
limitation similar in scope.
We do not consider Appellants’ arguments, summarized supra, to be
persuasive to show Examiner error. We agree with the Examiner’s finding
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that Yao discusses an electronic bookmark device that includes a clock
function, a scheduler, and alarm function to store reminders or appointments
(Ans. 25). We further agree with the Examiner’s finding that Yao discloses
a memory (Ans. 4). Yao discloses an electronic bookmark device B that
includes electrical circuitry that incorporates a micro-controller or processor
and memory store for controlling the output sent to its display screen,
responding to user input from the keypad and storing the data and instruction
set for the functions performed by the device B (FF 2). Yao discloses that
the electronic bookmark device includes a clock key 24 on its control panel
which when pressed enables the device to function as a clock (FF 3). In
addition, the device includes a schedule alarm/daily alarm key 25 which
when pressed enables the electronic bookmark device to function as a
scheduler/alarm that may be used to enter reminders or appointments (FF3).
The Specification discloses an example of the electronic timer
tracking a reading time which includes manual setting of the start and stop
times (FF 1). At the beginning of a reading session, the reader pushes the
reset button to set timer and display to zero. The reader then presses the
start button to start the timer count (FF 1). The display displays the present
timer count in minutes and seconds, along with the current calendar day,
time of day, and other useful information (FF 1). Previous or cumulative
timer counts can be recalled from memory (FF 1). If the reader decides to
pause from reading for a few moments, or stop for an extended period of
time, then he or she presses stop button (FF 1). The reader manually marks
the last sentence read by adjusting a moveable slide attached on the side of
the substrate of the bookmark (FF 1). Similarly, a user of the electronic
bookmark device of Yao may press key 26 and set an alarm to alert the user
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when 15 minutes has expired, thereby tracking 15 minutes of reading time
(FF 3). Therefore, the schedule alarm/daily alarm function of Yao is
“configurable to track reading time” similar to the Appellants’ disclosed
feature of tracking reading time.
We further agree with the Examiner’s finding that McMillan is
fundamentally concerned with tracking time spent reading questions from
various test booklets and answering corresponding questions (Ans. 27; FF
4). McMillan allows a user to time the duration of an event such as test
taking, wherein the display can display information relating to the timed
event or sub-event (FF 4). McMillan discloses one embodiment of the
apparatus that provides a timer for timing an event that includes a display,
one or more buttons for allowing a user to start and stop the timer, and a
visual indictor for alerting the user to an event (FF 5). McMillan’s device
enables the user to set the amount of time on the test section, set the amount
of questions in the section, set which question is currently being worked on,
recall from memory certain individualized time and data gleaned from
earlier practice exams, receive an end of section warning light, receive a
warning light when too much time is spent on one question, adjust the
warning time or turn the warning light off (FF 6). In addition, the user can
switch between “count up” and “count down” (FF 6). Test taking involves
reading the questions and writing an answer to the questions. Particularly
for test examples given, such as LSAT, GMAT, MCAT, GRE, and SAT, the
questions involve fact patterns where the user must spend a substantial
amount of time reading information before reading a question and selecting
the correct choice (FF 4). Thus, the combined teaching of Yao and
McMillan disclose a timer that is programmable and "configurable to track
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individual, incremental and cumulative times for each of a plurality of
readers and for each of a plurality of books for each of the plurality of
readers."
We agree with the Examiner’s finding that Yao and Mooney disclose
audible alarm features (Ans. 6, 26, and 27). Yao discloses an alarm function
that is initiated with schedule alarm/daily alarm key 26 (FF 3). Mooney
discloses an alarm clock that has the standard alarm of a loud signal or
buzzer like tone, music, and/or music chimes (FF 7).
We are not persuaded by Appellants’ argument that the references are
non-analogous. We agree with the Examiner’s finding that Yao, McMillan
and Mooney all pertain to the time measurement art (Ans. 27). Yao
discloses an alarm and clock function (FF 3). McMillan discloses an
apparatus that keeps track of event times (FF 4) and Mooney discloses an
alarm clock (FF 7).
Therefore, we find that the Examiner has established the prima facie
obviousness of the claims, because the combination of Yao, McMillan,
Mooney, and Appellants’ Admitted Prior Art discloses a bookmark having
an electronic timer that includes a memory circuit, an audible alarm, and a
timer that is “configurable to track individual, incremental and cumulative
times for each of a plurality of readers and for each of a plurality of books
for each of the plurality of readers.” As a result, we will sustain the
Examiner’s § 103 rejection of independent claims 1, 10, 15, 19, and 22 and
that of dependent claims 2-5, 9, 11, 12, 14, 16-18, 20, and 23-26.
Claims 6-8, 13, and 21
Appellants argue that claims 6-8, 13, and 21 are patentable over the
cited prior art because the claims depend from claim 1 (App. Br. 19, 23, and
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33). As noted supra, we find that the combination of Yao, McMillan,
Mooney, and APA teach all the features of claims 1, 10, and 19 from which
claims 6-8, 13, and 21 respectively depend. We therefore affirm the
Examiner’s rejection of claims 6-8, 13, and 21 under 35 U.S.C. § 103, for
the same reasons expressed with respect to parent claims 1, 10, and 19,
supra.

CONCLUSION
The references disclose a bookmark having an integrated electronic
timer circuit that includes a timer that is “configurable to track individual,
incremental and cumulative times for each of a plurality of readers and for
each of a plurality of books for each of the plurality of readers.”
The references disclose a bookmark having an electronic timer circuit
that includes a memory.
The references disclose a bookmark having an electronic timer circuit
that includes an audible alarm.
The references are not from non-analogous arts.

ORDER
The Examiner’s rejection of claims 1-26 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED

ELD

ROBERT D. ATKINS
605 W. KNOX ROAD, SUITE 104
TEMPE, AZ 85284

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