Ex Parte Perlman

Board of Patent Appeals and Interferences

Nov 4, 2010

11233972 (B.P.A.I. Nov. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/233,972 09/23/2005 David Perlman DMP-10202/29 9885
25006 7590 11/04/2010
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
MEHMOOD, JENNIFER
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
11/04/2010 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 DAVID PERLMAN
____________________

Appeal 2009-010107
Application 11/233,972
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, KENNETH W. HAIRSTON, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for 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 2009-010107
Application 11/233,972

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-6 and 8-12. No claim 7 was filed. We have jurisdiction under 35 U.S.C.
§ 6(b).
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. Apparatus for discouraging trichotillomania and other
unwanted behaviors, comprising:
a proximity detector operative to generate an alert in the event
that a user’s hand approaches an area of their body associated with an
unwanted behavior;
a memory for storing information associated with the event;
an input allowing a user to characterize the event; and
an interface enabling at least the information to be recalled for
later review.
Appellant’s Contentions
Appellant contends that the Examiner erred in rejecting claims 1-6, 8,
11, and 12 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of U.S. Patent Application Publication 2004/0160326 A1 to
Zarouri (published Aug. 19, 2004) and U.S. Patent 6,942,615 B2 issued Sep.
13, 2005 to Suzuki et al (“Suzuki”); and erred in rejecting claims 9 and 10
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Zarouri, Suzuki, and U.S. Patent Application Publication 2002/0109596 A1
to Phillips et al (“Phillips”) (published Aug. 15, 2002); because importing
the teachings of Suzuki into Zarouri represents hindsight as Zarouri already
addresses the problem used by the Examiner for the purposes of rejection.
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Application 11/233,972

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Particularly, Appellant states that: (a) “the teachings of Suzuki would
not ‘correct (or supplement) automated data generated by a computer [of
Zarouri] to generate an accurate (and complete) output,’ therby [sic]
rendering Appellant's inventions obvious” (brackets in original); (b) “given
that Zarouri considered what capabilities should be included in its system, if
it had thought to include an input for allowing a user to characterize, it
would have done so,” and therefore “[t]he Examiner’s reliance upon Suzuki
for this feature represents hindsight”; and (c) “given that Zarouri already
addresses the problem used by the Examiner for the purposes of rejection, it
would not be obvious to import the teachings of Suzuki” (App. Br. 3-4).
Issue on Appeal
Did the Examiner err in rejecting claims 1-6 and 8-12 as being
obvious because the combination of Suzuki with Zarouri represents
impermissible hindsight?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
We disagree with Appellant’s conclusion. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur
with the conclusion reached by the Examiner.
We also note that in addition to the so-called “events,” the existence
of “false alarms” is known in the prior art (Zarouri ¶ [0025]). We take
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Application 11/233,972

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notice of the fact that the recording of known and available information for
future use is always desirable.
Appellant argues that the Examiner’s conclusion of obviousness is
based on improper hindsight reasoning. However,
[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so 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 applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellant may also
argue that the combination of two or more references is “hindsight” because
“express” motivation to combine the references is lacking. However, there
is no requirement that an “express, written motivation to combine must
appear in prior art references before a finding of obviousness.” See Ruiz v.
A.B. Chance Co., 357 F.3d 1270, 1276 (Fed. Cir. 2004).
Further regarding the issue of hindsight, in KSR the U.S. Supreme
Court reaffirmed that “[a] factfinder should be aware, of course, of the
distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007). See also Graham v. John Deere Co., 383 U.S. 1, 36 (1966).
Nevertheless, in KSR the Supreme Court also qualified the issue of hindsight
by stating that “[r]igid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR, 550 U.S. at 421.
In KSR, the Supreme Court further stated:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
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Application 11/233,972

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ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. This reasoning is applicable here.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-6 and 8-12 as
being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-6 and 8-12 are not patentable.

DECISION
The Examiner’s rejection of claims 1-6 and 8-12 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)(v).

AFFIRMED

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GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C.
PO BOX 7021
TROY, MI 48007-7021