Ex Parte Robinson et al

Patent Trial and Appeal Board

Mar 28, 2017

12553164 (P.T.A.B. Mar. 28, 2017)

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.
12/553,164 09/03/2009 Ronni L. Robinson MCP5168USNP 6057
27777 7590 03/30/2017
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
AVIGAN, ADAM JOSEPH
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
j nju spatent @ coru s .j nj. com
lhowd@its.jnj.com
pair_jnj @ firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONNI L. ROBINSON, HARRY S. SOWDEN, and
LEO B. KRIKSUNOV
Appeal 2015-005596
Application 12/553,164
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
SEAN P. O’HANLON, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, 4, and 5 as unpatentable under 35 U.S.C. § 103(a)
over Kopanic (US 7,182,739 B2, iss. Feb. 27, 2007) and Schorr (US
2006/0142828 Al, pub. June 29, 2006), and claims 3 and 6 over Kopanic,
Schorr, and Official Notice taken by the Examiner. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-005596
Application 12/553,164
THE INVENTION
Appellants’ invention is a device to provide vibration and heating
sensations to human skin. Spec. 4. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A thermal device for topical application on humans that
comprises:
a) a thermal insert containing a thermal composition,
wherein the thermal insert additionally comprises at least one
thermally conductive component, wherein said at least one
thermally conductive component has a thermal conductivity of
at least about 10 W/mK;
b) a vibrational means that transmits vibrational energy to
and through the thermal insert; and
c) a power source having capacity to power the vibratory
element from at least about 10 minutes to a maximum duration
of about 12 hours;
wherein the vibratory element has a maximum dimension
not greater than about 7 centimeters; and the thermal device is a
unitary system having a thickness of not greater than about 10
millimeters.
OPINION
Unpatentability of Claims 1, 2, 4, and 5
Over Kopanic and Schorr
Appellants argue for the patentability of claim 1, but do not separately
argue for the patentability of any other claim. Appeal Br. 3—5.1 We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
The Examiner finds that Kopanic discloses a thermal device for
topical application on humans substantially as claimed. Final Action 3. The
Examiner acknowledges that Kopanic fails to expressly teach that the
1 Citations in this decision to “Appeal Br.” are with reference to Appellants’
“Corrected Appeal Brief’ filed October 22, 2014.
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Application 12/553,164
thermal component has a conductivity of 10 W/mK or that the power source
can power the vibratory element for up to 12 hours. Id. at 3^4. The
Examiner also acknowledges that Kopanic does not disclose the respective
size dimensions of 7 centimeters and 10 millimeters recited in claim 1. Id.
at 4. The Examiner relies on Schorr as disclosing thermal conductivity in an
analogous device of at least about 10 W/mK. Id. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to modify Kopanic with the teachings of
Schorr. Id. According to the Examiner, a person of ordinary skill in the art
would have done this to provide heat to a patient. Id.2 With respect to
the 12-hour temporal limitation of claim 1, the Examiner maintains that it
would have been obvious to design a system with the claimed battery life as
a matter of routine optimization. Id. (citing In re Aller, 220 F.2d 454
(CCPA 1955)).
Appellants traverse the Examiner’s rejection by arguing that neither
Kopanic nor Schorr disclose a power source that can power a vibratory
element for up to 12 hours as claimed. Appeal Br. 4.
In response, the Examiner reiterates the position taken in the Final
Rejection that it would have been obvious to a person of ordinary skill in the
art to design a system with the claimed battery life as a matter of routine
optimization. Ans. 2—3 (citing Aller, supra). The Examiner explains that,
since Kopanic already teaches a battery for powering a vibratory element, it
2 The Final Rejection actually states “to enhance the device of Kopanic’s
ability to provide the to a patient or user.” Final Action 4 (emphasis added).
Given the overall context of the Examiner’s rejection, we consider the
foregoing to be a typographical error and that the Examiner intended to say
“provide heat to a patient.” Id. (emphasis added).
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Application 12/553,164
would have been obvious to optimize the battery life to be within the
claimed range. Id. at 3. The Examiner notes that Appellants do not
challenge the Examiner’s reliance on Aller. Id. The Examiner also observes
that Appellants provide neither evidence nor argument regarding the
criticality of the claimed battery life. Id.
Appellants’ Specification provides the following disclosure regarding
battery life.
[T]he power source is contained within the thermal device, and
has capacity to power the vibratory element for at least about 20
minutes, e.g. at least about 30 minutes, of operation. Preferably
the power source is small in size, in order to be contained
conveniently and worn discreetly on the body of the user. In
certain embodiments, the power source can be a single-use
battery, such as either button cell shaped or cylindrical cell
shaped or flat-pouch encapsulated battery based on any
chemical composition known in the art, including manganese-
zinc, metal hydride, lithium, lithium ion, lithium polymer, and
other known battery chemistries. Voltage of the battery can
range from 1 volts to 3 volts to 12 volts depending on the motor
employed. The battery capacity is selected to provide for
sufficient time of operation of the vibrating element as
described above. Suitable power sources can include primary
batteries and secondary (rechargeable) batteries, fuel cells,
hydrocarbon fuel cells, printed batteries, and plug-in power
sources. In one embodiment, the power source for the vibratory
component must have adequate energy density for the vibratory
component to vibrate for up to 8 hours, e.g. up to 10 hours, e.g.
up to 12 hours.
Spec. 19,11. 10—25. There is no indication in the Specification that
Appellants have achieved a new or unexpected advancement in battery
technology. The foregoing passage leads us to conclude that Appellants are
merely relying on well-known and conventional battery technology to power
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Application 12/553,164
their invention in accordance with the 12-hour temporal limitation of
claim 1. Id. (“battery capacity is selected”).
Kopanic discloses a therapy patch that is adhesively attached to the
skin that has a motor and battery to provide a vibration source. Kopanic,
Abstract. Since Kopanic uses a battery, we presume that a person of
ordinary skill in the art is familiar with the capabilities of known batteries as
of the date of invention. See In re Jacoby, 309 F.2d 513,516 (CCPA 1962)
(an artisan must be presumed to know something about the art apart from
what the references disclose). Appellants provide neither evidence nor
argument to the contrary.
We are not persuaded that the Examiner errs in relying on the routine
optimization principles of Aller, supra. It is well-settled that the normal
desire of scientists to improve on what is already generally known provides
incentive to optimize a parameter within a disclosed range. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The principles of routine
optimization are generally limited to cases in which the optimized variable is
a result effective variable. See In re Antonie, 559 F.2d 618, 620 (CCPA
1977). However, in the instant case, it is beyond dispute that battery life is
result effective as it is well-known that a battery will discharge its stored
energy overtime. See In re Applied Materials, Inc., 692 F.3d 1289, 1297
(Fed. Cir. 2012) (“A recognition in the prior art that a property is affected by
the variable is sufficient to find the variable result-effective.”).
In the absence of any evidence that Appellants’ claimed battery life is
critical or achieves unexpected results, merely claiming a specified battery
life does not patentably distinguish Appellants’ invention over the prior art.
[Generally, a claim to a product does not become nonobvious
simply because the patent specification provides a more
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Application 12/553,164
comprehensive explication of the known relationships between
the variables and the affected properties.
Applied Materials, 692 F.3d at 1297. In view of the foregoing, we agree
with the Examiner that Appellants’ battery life limitation amounts to mere
routine optimization of a result-effective variable.
Appellants next argue that the applied art fails to disclose a vibratory
element with a maximum dimension of 7 centimeters and a thermal device
with a thickness of 10 millimeters. Appeal Br. 4.
In response, the Examiner reiterates the position taken in the Final
Rejection that it would have been obvious to make a device with the claimed
dimensions since it would have involved mere changes in the size of
components, which is a matter encompassed by ordinary skill. Final
Action 5; Ans. 3 (citing In re Rose, 220 F.2d 459 (CCPA 1955)). The
Examiner observes that Appellants do not challenge the applicability of Rose
to the facts of the instant case. Ans. 3. The Examiner further observes that
Appellants provide neither evidence nor argument regarding criticality or
unexpected results for the claimed dimensions. Id.
As further evidence that Appellants’ claimed dimensions would have
been obvious to one of ordinary skill in the art, the Examiner cites US
2007/0203435 A1 to Novak (pub. Aug. 30, 2007) and US 4,700,706 to
Munch (iss. Oct. 20, 1987). Id. at 4. The Examiner directs our attention to
paragraph 39 of Novak as demonstrating that vibration motors with a
maximum dimension of less than 7 cm were known at the time of
Appellants’ invention. Id. The Examiner directs our attention to column 2
of Munch as demonstrating that thermal packs with a thickness of no greater
than 10 mm were known at the time of invention. Id.
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Application 12/553,164
The Rose case stands for the proposition that claim limitations
directed to the size of an article are not ordinarily a matter of invention.
Rose, 220 F.2d at 463 (citing In re Yount, 171 F.2d 317 (CCPA 1948)). In
the instant case, Appellants present neither evidence nor argument that
distinguish the size considerations of their invention from that of either Rose
or Yount. Appellants, furthermore, present neither evidence nor argument to
rebut the Examiner’s findings of fact based on Novak and/or Munch.3
We have considered the Appellants’ other arguments and find them to
be without merit. In view of the foregoing discussion, we determine the
Examiner’s findings of fact are supported by a preponderance of the
evidence, and that the Examiner’s legal conclusion of unpatentability is
well-founded. Accordingly, we sustain the Examiner’s unpatentability
rejection of claims 1, 2, 4, and 5.
Unpatentability of Claims 3 and 6
Claim 3 depends from claim 1 and adds the limitation: “maintains a
temperature differential from about 3 to about 10 degrees Celsius for at least
about 8 hours, as between the surface of the thermal insert and the skin.”
Claims App. Claim 6 depends from claim 1 and adds the limitation:
“wherein the vibrational means transmits vibrational energy at a frequency
of from about 5 HZ to about 1000 HZ.” Id. In addition to relying on
Kopanic and Schorr under this ground of rejection, the Examiner takes
official notice that average skin temperature is about 35 degrees Celsius.
3 Although Novak and Munch are not cited as applied prior art in the
rejection, we deem it appropriate for the Examiner to rely on these
references as background knowledge of a person of ordinary skill in the art.
See Randall Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed. Cir. 2013).
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Final Action 6. The Examiner finds that, since Schorr teaches maintaining a
surface temperature of between 30 to 60 degrees Celsius for at least 10
hours, Schorr is capable of achieving the temperature differential of claim 3.
Id. With respect to claim 6, the Examiner finds that it would have been
obvious to transmit vibrational energy within the claimed frequency range as
a matter of routine optimization. Id. (citing A Her, supra).
Appellants do not argue for the separate patentability of claims 3
and/or 6 apart from arguments that we have previously considered in
connection with the rejection of claim 1 and found unpersuasive. Thus, we
are not apprised of error, and we sustain the rejection of claims 3 and 6.
DECISION
The decision of the Examiner to reject claims 1—6 is affirmed.4
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
4 On page 5 of the Appeal Brief, Appellants state:
Applicants note that the Office Action has required the inclusion of
drawings to facilitate understanding of the invention. Applicants
respectfully disagree with such requirement. It should be noted that
examination of this application has been going on since February
of 2012 without the need for drawings.
Appeal Br. 5. We note that the dispute between Appellants and the
Examiner over the need for drawings is a petitionable matter and is not
subject to review on appeal. See 37 C.F.R. § 1.113.
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