Ex Parte Solazzo et al

Patent Trial and Appeal Board

Sep 17, 2018

13889829 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/889,829 05/08/2013 Anthony Solazzo
27162 7590 09/18/2018
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
733900.92 7897
EXAMINER
LAU, HO! CHING
ART UNIT PAPER NUMBER
2689
MAIL DATE DELIVERY MODE
09/18/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY SOLAZZO, HERBERT HEFLICH, and
MICHAEL VAILLANCOURT
Appeal2017-005074
Application 13/889 ,829 1
Technology Center 2600
Before DEBRA K. STEPHENS, ERIC B. CHEN, and
THOMAS L. GIANNETTI, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1---6, 9-11, 14--18, and 23-26. 23 We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Patient Wellness
Monitor LLC (App. Br. 1).
2 Claim 27 has been allowed (Final Act. 23). The rejection of claims 7 and
20 has been withdrawn (Ans. 2). Claim 13 has been cancelled.
3 Claims 8, 12, 19, 21, and 22 have been objected to as dependent upon a
rejected base claim, but indicated as allowable if rewritten (id.). This issue
is not before us (see MPEP §§ 706.01, 1201).
Appeal2017-005074
Application 13/889,829
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to a diaper monitor
(Abstract). Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A diaper monitor comprising
a sensor housing for slidable mounting in a pocket of a
diaper, said sensor housing having a pair of parallel spaced
apart conductive strips on a surface thereof facing into the
diaper and defining an area therebetween and a wireless
transmitter sealed within said housing, said transmitter
being responsive to completion of an electrical circuit
between said conductive strips upon wetting of said area
to emit a signal therefrom; and
a clip mounted on said housing for movement between a
locking position to secure said housing to the diaper and
an open position to allow removal of said housing from the
diaper.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yoshida et al. (hereinafter
"Yoshida")
Nissim et al. (hereinafter
"Nissim")
Pacunas
Nielson
Cretu-Petra
Hofmeister et al. (hereinafter
"Hofmeister")
US 3,949,403 A
US 5,760,694 A
US 6,267,730 Bl
US 2004/0207530 Al
US 2005/0195085 Al
US 7,250,547 Bl
2
Apr. 6, 1976
June 2, 1998
July 31, 2001
Oct. 21, 2004
Sept. 8, 2005
July 31, 2007
Appeal2017-005074
Application 13/889,829
REJECTIONS
Claims 1---6, 11, 14, 16-18, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nissim and Pacunas (Final Act. 8-17). 4
Claims 9, 10, and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nissim, and Pacunas, and Yoshida (Final Act. 20-21 ).
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nissim, Pacunas, and Nielsen (Final Act. 21-22).
Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nissim, Pacunas, Yoshida, and Hofmeister (Final Act. 22-
23).
ISSUE 1
35 U.S.C. § 103(a): Claims 1-6, 11, 14, 16--18, and 23
Appellants contend their invention as recited in claims 1-3, 6, 11, 14,
16-18, and 23, is patentable over Nissim and Pacunas (App. Br. 4--11). 5
ANALYSIS
We disagree with Appellants' conclusions. With respect to the claims
argued by Appellants, we highlight and address specific findings and
4 Although the Final Action's heading omits claims 4 and 5 (Final Act. 8),
the Final Action details the rejection of claims 4 and 5 in the analysis (id. at
11 ). Therefore, we consider this an inadvertent harmless typographical
error.
5 Rather than repeat the arguments here, we refer to the Appeal Brief and
Reply Brief for the positions of Appellants and the Final Office Action and
Answer for the positions of the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived (see 37 C.F.R. § 4I.37(c)(l)(iv) (2012)).
3
Appeal2017-005074
Application 13/889,829
arguments for emphasis as follows. Appellants contend "[t]he Examiner's
position as stated was not understood grammatically or substantively" (App.
Br. 6-7). Upon review of the Final Action, we are not persuaded the
Examiner's findings and reasoning fail to put Appellant on notice of the
grounds of rejection. Specifically, the Examiner identifies the references,
states what each reference teaches with specific cites, and articulates
reasoning for the combination of teachings and suggestions. Accordingly,
Appellants' contention is unpersuasive.
35 U.S.C. § 103(a): Claims 1-6, 11, 14, 16--18, and 23
Claim 1:
Appellants contend that Nissim does not disclose the sensor housing
( 1) "having a pair of parallel spaced apart conductive strips on a surface
thereof facing into the diaper and defining an area therebetween" and (2)
"being responsive to completion of an electrical circuit between said
conductive strips upon wetting of said area to emit a signal," as required by
claim 1 (App. Br. 4). Appellants argue "[t]here is no disclosure in Nissim
that the area between the members 127 of the sensor 124 is wetted" because
"the water impermeable electrically insulating plastic sheath 110 separates
the members 12 7 from the pads 11 7" thus preventing water permeating
through the water impermeable plastic sheath 110 (id. at 5).
We are not persuaded by Appellants' arguments. The Examiner finds
Nissim's sheath 110 of diaper 100, shown in Figures 1 and 2, teaches the
recited "sensor housing" (Final Act. 9; Ans. 4--7). The Examiner further
finds, and we agree, the two parallel electrodes 114 attached to electrically-
conducive pads 117 constitute conductive strips on a surface of sheath 110,
4
Appeal2017-005074
Application 13/889,829
which are inwardly facing and, by nature of their parallel placement and
finite length, define an area therebetween (Final Act. 9; see also Ans. 3-5).
Therefore, we find Nissim teaches "having a pair of parallel spaced apart
conductive strips on a surface thereof facing into the diaper and defining an
area therebetween," as recited in claim 1.
As identified by the Examiner, the wetting of the area in Nissam
completes an electrical circuit between said conductive strips (Final Act. 9
(citing Nissim 2:65-3:5)). Nissin teaches:
When a user wears and wets the diaper, the liquid passes through
the sheet 104 into the absorber layer 107 and to the sheath 110.
The liquid then electrolytically short-circuits the electrodes 114.
Hence the electrodes 114 operate as a conductive switch which .
. . closed, i.e. conductive, in a wet diaper"
(Final Act. 9 (citing Nissim 2:65-3:5 (emphasis added))). Nissim further
teaches "[w]hen the diaper is wet, the electrolytic action of the urine in the
diaper contacts the electrodes 114 and closes the switch, i.e. makes it
conductive across the gap between the electrodes 114" (id. at 3:19-22
(emphasis added)). The Examiner finds, and we agree, that sensor 124,
having planar members 127, is attached to pads 117 and, when wet, the
current produced by the electrolytically conductive gap "triggers an alarm
which, according to one embodiment, energizes a piezoelectric sounder and
plays a tune or makes some other sound such as a beep" (Nissim 3:30-32;
see Final Act. 9 (citing Nissim 3:30-32)).
Thus, we are unpersuaded by Appellants' argument and determine
Nissim teaches "completion of an electrical circuit between said conductive
strips upon wetting of said area," as recited in claim 1.
In addition, we note Nissim teaches sensor 124 may provide
numerous wireless transmitted signals responsive to wetting (Nissim 3: 1-
5
Appeal2017-005074
Application 13/889,829
4:68). Nissim teaches "the sensor 124 includes ... LED, radio transmitter,
infra-red transmitter, music generating circuit, or a tactilely-sensible
vibrator ... " (Nissim 4:38--43 (emphasis added)).
Accordingly, we find Nissim teaches a wireless transmitter "being
responsive to completion of an electrical circuit between said conductive
strips upon wetting of said area to emit a signal therefrom," as recited in
claim 1.
Appellants further assert the resulting structure ofNissim with "a clip
and the relative structure and arrangement between the sensor and the pocket
as suggested by Pacunas" would not result in the recited clip (App. Br. 7).
We are not persuaded by Appellants' argument. The Examiner has set
forth specific findings and has articulated reasoning with rational
underpinning as to why an ordinarily skilled artisan would have been
motivated to combine the teachings and suggestions ofNissim and Pacunas
(Final Act. 9-1 O; Ans. 7-8). Appellants fail to address these findings;
rather, Appellants merely claim the resulting structure would not result in
the structure as claimed (App. Br. 7).
Accordingly, Appellants have not persuaded us the combination of
Nissim and Pacunas fails to teach or suggest the invention as recited in claim
1. Nor have Appellants persuaded us the combination of the teachings of
Nissim and Pacunas would not have been obvious to an ordinarily skilled
artisan.
Claim 2:
With respect to claim 2, we are not persuaded by Appellants'
contentions. Claim 2 requires the diaper monitor of claim 1 "wherein said
6
Appeal2017-005074
Application 13/889,829
conductive strips extend from said surface to around an end of said housing
opposite said clip." The claim requires conductive strips that extend from
the claimed surface "to around an end of said housing opposite said clip."
We agree with the Examiner's broad, but reasonable interpretation in light of
the Specification, that "around an end," is "a relative measurement based on
how one person [ would] define the area of an end" (Final Act. 1 O; see also
Ans. 8-9). The Examiner then finds that Pacunas' teaches this limitation
(Final Act. 10). Appellants do not proffer sufficient evidence or argument to
persuade us of error in the Examiner's findings and reasoning.
Claim 6:
With respect to claim 6, we are not persuaded by Appellants'
contentions. Appellants contend Nissim "is void of a battery and a switch,"
and "modifying Nissim to substitute a battery and a switch for the oscillating
voltage or pulse source and electrodes 114 would be contrary to the
teachings of Nissim" (App. Br. 8-9).
As found by the Examiner, Nissim teaches the electrical circuit
coupled to the wireless transmitter, has both a capacitor and a switch (Final
Act. 12 ( citing Nissim 4:5-30, 65---68 ("[t]he external resistor 324 performs a
charge current limiting function in the external RIC circuit formed with the
diaper's capacitor-switch network 327" ( emphasis added)))). The Examiner
then determines, and we agree, it would have been obvious to one of
ordinary skill to modify the wireless transmitter, having the capacitor-switch
circuitry, as disclosed in Nissim, with the battery connected to the wireless
transmitter disclosed in Pacunas (Final Act. 14; Ans. 10).
7
Appeal2017-005074
Application 13/889,829
Appellants further assert "actuating the electrical circuit of Nissim
with a switch on the sensor 124 would negate the purpose and function of
the electrodes 114 on the sheath 110" (App. Br. 9). We are not persuaded.
Specifically, Appellants have failed to persuade us the Examiner erred in
determining "providing an additional MAIN power switch as shown by
Pacunas to the sensor housing 124 ofNissim does NOT prevent the
actuation of the electrical circuit ofNissim with a switch on the sensor 124
and would NOT negate the purpose and function of the electrodes 114 on the
sheath 110" (Ans. 10). We agree with the Examiner that "an additional main
power switch would allow the user to selectively tum on and off' the diaper
monitor (id.). Accordingly, Appellants have not persuaded us the teachings
ofNissim and Pacunas fail to teach claim 6.
Claim 16
With respect to claim 16, we are not persuaded by Appellants'
contentions. Appellants repeat previous arguments, specifically, that (1) the
members 127 of sensor 124 are not in contact with sheath 110, (2) sensor
124 is not responsive to completion of an electrical circuit between members
127 on sensor 124, and (3) the conductive strips in Nissim are not on a
surface of the sensor housing. As discussed supra, we agree with the
Examiner's findings and reasoning.
Conclusion
Appellants have not persuaded us the Examiner fails to show the
combination ofNissim and Pacunas teaches or suggests the limitations as
recited in claims 1, 2, 6, and 16. Nor are we persuaded by Appellants'
8
Appeal2017-005074
Application 13/889,829
arguments that the combination of teachings would not have been obvious to
an ordinarily skilled artisan. Accordingly, we sustain the rejection of claims
1, 2, 6, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Nissim
and Pacunas.
It follows, we sustain the Examiner's rejection of claims 3-5, 11, 14,
17, 18, and 23 which Appellants argue are patentable for similar reasons (see
App. Br. 8-11; 37 C.F.R. § 4I.37(c)(l)(iv)), under 35 U.S.C. § 103(a) as
being unpatentable over Nissim and Pacunas.
35 U.S.C. § 103(a): Claims 9, 10, 15, and 24-26
Appellants contend claims 9, 10, 15, and 24--26 are patentable due to
their reliance directly, or indirectly, from independent claims 1 and 16. For
the reasons set forth above, Appellants have not persuaded us of Examiner's
error.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1---6, 9-11, 14--18, and 23-26 under 35 U.S.C. § 103(a).
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.
§ 4I.50(f)).
AFFIRMED
9