Ex Parte Makem

Board of Patent Appeals and Interferences

Sep 7, 2012

11839114 (B.P.A.I. Sep. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte JUDITH MAKEM
____________________

Appeal 2010-006121
Application 11/839,114
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and GAY ANN
SPAHN, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006121
Application 11/839,114
2
STATEMENT OF THE CASE
Judith Makem (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-17. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A pad, comprising:
a lower layer comprising a liquid impermeable material,
structured to prevent passage of urine;
an intermediate layer comprising a liquid absorbent
material;
a top layer comprising a durable material that is
sufficiently hard to resist chewing by a dog; and structured so
that deposition of the urine on the top sheet will pass through to
the intermediate layer; and
a sensor positioned internal to the pad that senses urine
deposited onto the pad.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Brazzell
Hennigan
Olivadoti
Armstrong
US 3,752,121
US 6,041,737
US 6,059,247
US 6,983,719 B2
Aug. 14, 1973
Mar. 28, 2000
May 9, 2000
Jan. 10, 2006
Drs. Foster and Smith, Inc., DOGS, House Training,
http://www.peteducation.com/article.cfm?c=2+2085&aid=157 (last visited
Nov. 19, 2008) (hereinafter “House Training”).

Appeal 2010-006121
Application 11/839,114
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Rejections
Appellant requests our review of the following rejections:
Claims 1-6, 8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable
over Armstrong and Brazzell.
Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Armstrong,
Brazzell, and Olivadoti.
Claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Armstrong, Brazzell, and Hennigan.
Claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable over
Armstrong, Brazzell, and House Training.
OPINION
The issue presented in this appeal is whether the Examiner erred in
determining it would have been obvious to modify the pad of Armstrong’s
figure 1 embodiment to place the sensor 7 internal of the pad “to protect the
sensor from damage.” Ans. 3; App. Br. 5.
Appellant argues that the Examiner failed “to provide any motivation
apart from mere hindsight” for the proposed modification and that
modifying Armstrong’s pad to position the sensor internally to the apparatus
“would substantially alter its operation and cause the sensor to lose
functionality.” App. Br. 5.
Appellant’s first argument does not apprise us of error in the
Examiner’s rejection, because the Supreme Court has stated that a rigid
insistence on teaching, suggestion, or motivation is incompatible with its
precedent concerning obviousness. KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 419 (2007). Rejections on obviousness grounds must be supported by
“some articulated reasoning with some rational underpinning” to combine
the known elements in the manner required in the claim at issue. In re Kahn,
Appeal 2010-006121
Application 11/839,114
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441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418. However, “the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 550 U.S. at 418. The Examiner articulated a
reason for the modification (i.e., to protect the sensor from damage), and that
reason has rational underpinnings.
Appellant’s second argument also is not convincing. We agree with
the Examiner that placing Armstrong’s sensor at an internal location within
the catchment device 2, rather than “over the top sheet” as disclosed in the
figure 1 embodiment of Armstrong’s device (col. 2, ll. 38-40) would not
substantially alter its operation and cause the sensor to lose its functionality.
See Ans. 6, ll. 6-9 (pointing out that Armstrong’s disclosure of a second
embodiment in figure 3 in which a porous fabric is placed over the sensing
device shows that the sensing device need not be placed on the very top
surface of the apparatus in order to operate as contemplated by Armstrong’s
invention); Ans. 7, ll. 10-16 (pointing out that the top sheet 8 of the figure 1
embodiment of Armstrong’s catchment device 2 is liquid permeable and that
Armstrong’s sensing device is activated by moisture or temperature
activation, and asserting that placing the sensing device at a location
internally beneath the liquid permeable layer would not alter the operation of
the sensing device because the sensing device would be activated by liquid
passing through the top sheet); see Armstrong, col. 2, ll. 34-35, 38-43, 53-
63.
Appellant argues that moving Armstrong’s sensor to a position
internally in the apparatus would not have been obvious because this would
prevent the apparatus from “sensing a bowel movement in the absence of
Appeal 2010-006121
Application 11/839,114
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urine.” App. Br. 5. This argument is not convincing, as the mechanism
Armstrong discusses for activating the sensing device in the figure 1
embodiment is “electrical contact being made when liquid extends between
foil parts of the arrangement of different polarity” (col. 2, ll. 40-42). Thus,
Armstrong’s disclosed sensing device, even when placed over the permeable
top sheet as described for the figure 1 embodiment, does not appear to be
targeted to sensing non-liquid bowel movements. Additionally, as pointed
out by the Examiner, Armstrong discloses a sensing device “for moisture or
temperature activation” (col. 2, ll. 31-32, 53-55), the latter of which would
not require direct contact with liquid/moisture.
Finally, Appellant’s argument that “positioning the sensing element
beneath a liquid absorbent material would interfere with the operation of the
sensing element” (Reply Br. 3) is not convincing, because the modification
proposed by the Examiner does not call for the sensing device to be
positioned beneath the liquid absorbent material.
For the above reasons, we conclude that the Examiner did not err in
determining it would have been obvious to modify the pad of Armstrong’s
figure 1 embodiment to place the sensor 7 internal of the pad “to protect the
sensor from damage.” We therefore sustain the Examiner’s rejection of
independent claim 1 and of dependent claims 2-6, 8, and 11-15, for which
Appellant does not assert any separate arguments and which thus fall with
claim 1, as unpatentable over Armstrong and Brazzell.
In contesting the rejections of claims 7, 9, 10, 16, and 17, Appellant
merely relies on the same unpersuasive arguments asserted against the
rejection of claim 1. Thus, we also sustain the rejection of claim 7 as
unpatentable over Armstrong, Brazzell, and Olivadoti, the rejection of
claims 9 and 10 as unpatentable over Armstrong, Brazzell, and Hennigan,
Appeal 2010-006121
Application 11/839,114
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and the rejection of claims 16 and 17 as unpatentable over Armstrong,
Brazzell, and House Training.
DECISION
The Examiner’s decision rejecting claims 1-17 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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