Ex Parte Jung et al

Board of Patent Appeals and Interferences

Jul 18, 2012

11442688 (B.P.A.I. Jul. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/442,688 05/26/2006 Edward K.Y. Jung 0306-002-001-C00001 9660
44765 7590 07/18/2012
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
YOO, REGINA M
ART UNIT PAPER NUMBER
1775
MAIL DATE DELIVERY MODE
07/18/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

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 2010-012507
Application 11/442,688
Technology Center 1700
__________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
100, 101, 103, 104, 106-108, and 111-120. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to.
Claims 100 and 120 are illustrative:

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100. A sterilization system comprising:
means for measuring one or more distances from one or
more sources of sterilizing radiation to one or more surfaces
within one or more areas; and
means for transmitting one or more signals to the one or
more sources of sterilizing radiation in response to the
measuring.

120. A sterilization system comprising:
circuitry for measuring one or more distances from one
or more sources of sterilizing radiation to one or more surfaces
within one or more areas; and
circuitry for transmitting one or more signals to the one
or more sources of sterilizing radiation in response to the
measuring.

Appellants appeal the following rejections:
1. Claims 100, 115, 120 are rejected under 35 U.S.C. § 102(b) as being
unpatentable over Field (US 2005/0022844 A1, published Feb. 3,
2005).
2. Claims 100, 106-108, 112-115, and 117-120 are rejected under 35
U.S.C. § 102(e) as being unpatentable over Johnson (US
2006/0216193 A1, published Sep. 28, 2006).
3. Claims 101, 103, 104 and 116 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Johnson in view of Taylor (US
2008/0184518 A1, published Aug. 7, 2008).
4. Claims 100, 101, 107, 108, 112, 114-116, 119, and 120 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Brandt (US
6,132,784, issued Oct. 17, 2000 ) in view of Comeau (US 5,901,564,
issued May 11, 1999).
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5. Claim 106 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Brandt in view of Comeau and Brown-Skrobot (US
2005/0013729 A1, published Jan. 20, 2005).
6. Claim 111 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Brandt in view of Comeau and Fink (US 2004/0056201 A1,
published Mar. 25, 2004) or Swart (US 2002/0192340 A1, published
Dec. 19, 2002).

REJECTIONS (1) TO (2)
Appellants’ arguments focus on claims 100 and 120 (App. Br. 46-
126).
ISSUE
Did the Examiner reversibly err in determining that the structure of
Johnson or Field anticipates the means for measuring and means for
transmitting of claim 100, and the circuitry for measuring and circuitry for
transmitting of claim 120? We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSIS
Appellants argue that the Examiner has not established that the
structure of Field or Johnson meets the means-plus-function claim language
of claim 100 or the claim language of 120 (App. Br. 46-126). Appellants
contend that Field and Johnson do not use the exact same language used in
claim 100 and the Examiner has not established identity of function,
equivalence or how Field’s or Johnson’s structure meets the claim language
under the broadest reasonable interpretation consistent with the Specification
standard (App. Br. 46-71, 93-111). Regarding claim 120, Appellants
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contend that Field and Johnson do not use the exact claim language of claim
120 and the Examiner has not fully treated the language of claim 120 or
provided objectively verifiable evidence to support the finding that Johnson
or Field teaches the subject matter of claim 120 (App. Br. 72-92, 112-126).
Contrary to Appellants’ arguments, the Examiner finds that the
structures of Johnson and Field include the same or interchangeable (i.e.,
equivalent) structures disclosed by Appellants and so satisfy the means-plus-
function language of claim 100 (Ans. 19-21; 22-23). Appellants do not
respond or show error to these findings of the Examiner.
Regarding claim 120, the Examiner relies on the findings made
regarding claim 100 and adds that the structure of the prior art that measures
and transmits must “intrinsically” have circuitry (App. Br. 21 and 24).
Appellants do not respond to these findings of the Examiner.
For these reason and on this record, we affirm the Examiner’s § 102
rejections over Johnson and Field.

REJECTION (3)
Appellants argue claims 101,103, 104 and 116 separately.
ISSUE
Did the Examiner reversibly err in finding that the combined
teachings of Johnson and Taylor teach structures that satisfy the means-plus-
function language of claims 101, 103, 104, and 116? We decide this issue in
the negative.

FINDINGS OF FACT & ANALYSIS
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Appellants argue that the Examiner’s cited art does not expressly
recite the subject matter of dependent claims 101, 103, 104 and 116 and the
Examiner has not established identity of function or equivalence of
Johnson’s and Taylor’s structure with the claimed structure (App. Br. 127-
214). Appellants contend that the Examiner has not established that Taylor
corresponds to the claim language under the broadest reasonable
interpretation standard. Id.
Contrary to Appellants’ arguments, the Examiner finds that Taylor
teaches structures that include the same structure Appellants disclose in their
Specification and thus satisfy the claim language of claim 101, 103, 104 and
116 (Ans. 24-28). Appellants do not respond or show error in the
Examiner’s findings regarding the structure of Taylor and Johnson.
For these reasons and on this record, we affirm the Examiner’s §
103(a) rejection over Johnson in view of Taylor.

REJECTIONS (4) TO (6)
Appellants argue claims 100, 120, 106 and 111 (App. Br. 214-396).
ISSUES
1. Did the Examiner reversibly err in finding that the structures of
Brandt, Comeau, Brown-Skrobot, Fink and Swart meet the means-
plus-function claim language of claims 100, 106 and 111? We decide
this issue in the negative.
2. Did the Examiner reversibly err in finding that Brandt and Comeau
disclose structures that meet the circuitry for measuring and circuitry
for transmitting features of claim 120? We decide this issue in the
negative.
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3. Did the Examiner reversibly err in determining that combining the
teachings of Brandt, Comeau, Brown-Skrobot, Fink and Swart would
not have frustrated the purpose, changed the principle of operation, or
resulted in a reconstruction of Brandt’s sterilizing apparatus? We
decide this issue in the negative.

FINDINGS OF FACT & ANALYSIS
Issue (1)
Appellants argue that the Examiner has not established that the
structures of Brandt, Comeau, Brown-Skrobot, Fink and Swart meet the
means-plus-function claim language of claim 100 (App. Br. 215-258, 317-
343, 355-381). Appellants contend that the applied prior art does not use the
exact same language used in claim 100 and the Examiner has not established
identity of function, equivalence or how Field’s or Johnson’s structure meets
the claim language under the broadest reasonable interpretation consistent
with the Specification standard. Id.
However, the Examiner finds that Brandt, Comeau, Brown-Skrobot,
Fink and Swart teach the same or similar structures as those disclosed by
Appellants as corresponding to the means-plus-function language of claim
100 (Ans. 29-31, 32-36). Appellants do not specifically respond or
otherwise address the Examiner’s findings. Accordingly, we are not
persuaded by Appellants’ argument.

Issue (2)
Regarding claim 120, Appellants contend that Brandt and Comeau do
not use the exact claim language of claim 120 and the Examiner has not
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fully treated the language of claim 120 or provided objectively verifiable
evidence to support the finding that Brandt and Comeau teach the subject
matter of claim 120 (App. Br. 267-307).
However, the Examiner relies on findings regarding Brandt and
Comeau with regard to claim 100 (Ans. 32). The Examiner further finds that
Brandt and Comeau “intrinsically” disclose circuitry. Id. The Examiner’s
findings are reasonable in that the electronic components and sensors of
Brandt and Comeau would necessarily have circuitry in order to perform
their functions of measuring distances and transmitting signals.
Appellants do not respond or otherwise address the Examiner’s
findings regarding Brandt and Comeau.

Issue (3)
Appellants argue that combining Brandt, Comeau, Brown- Skrobot,
Fink and/or Swart would have frustrated the purpose, changed the principle
of operation, or resulted in a reconstruction of Brandt’s sterilizing apparatus
(App. Br. 258-266, 307-316, 344-354, 382-394).
The Examiner responds that the modification of Brandt with the
teachings of Comeau, Brown-Skrobot, Fink and/or Swart would not have
frustrated Brandt’s sterilizing purpose as all the prior art teach sterilizing
apparatus that use radiation and the modification would result in a modified
radiation sterilizing apparatus (Ans. 31-32, 34, 36). The Examiner further
responds that Appellants’ arguments are misdirected to the bodily
incorporation of, for example, Comeau’s sterilizing refrigerator into
Brandt’s produce sterilizer. Id. We agree.
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For example, Appellants argue that modifying Brandt and Comeau
would require changing the principle of operation of both Brandt and
Comeau by modifying Brandt to have Comeau’s features and vice versa
(App. Br. 264). However, the proper question as culled from the case law
and delineated in the portion of the Manual of Patent Examining Procedure
cited by Appellants on pages 258-259 of the Brief is whether the change
would have changed the principle of operation of the prior art invention
being modified, in this case Brandt.
The Examiner is not proposing to bodily incorporate the secondary
references into Brandt’s sterilizing apparatus (Ans. 13-19). For example, the
Examiner is not proposing to combine the entirety of Comeau’s refrigerator
into Brandt’s sterilizing apparatus. Rather, the Examiner is proposing to
modify Brandt’s sterilizing apparatus in light of Comeau’s teaching of a
structure that transmits signals to sources of sterilizing radiation in response
to a determining event to arrive at an apparatus structured to transmit signals
to the source of sterilizing radiation (Ans. 13-14). Appellants’ arguments do
not address the Examiner’s stated rejections.
For all the above reasons and on this record, we affirm the Examiner’s
§103 rejections (4) to (6).

DECISION
The Examiner’s decision is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

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