Ex Parte Toivonen et al

Patent Trial and Appeal Board

Jun 7, 2016

12800971 (P.T.A.B. Jun. 7, 2016)

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.
12/800,971 05/25/2010 Ari Toivonen 81702/JPW/LAD 9603
23432 7590 06/07/2016
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
PANCHOLI, VISHAL J
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
06/07/2016 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 ARI TOIVONEN and JUKKA ALHOLA
____________________

Appeal 2014-004183
Application 12/800,971
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
THOMAS F. SMEGAL, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
14. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2014-004183
Application 12/800,971
2
CLAIMED SUBJECT MATTER
The claims are directed to a liquid dispenser apparatus and method.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An apparatus for dispensing liquid, which apparatus is
arranged to detect an object and to control the dispensing of said
liquid, said apparatus including:
a first signal source which is arranged to generate a first
beam pulse and a second signal source which is arranged to
generate a second beam pulse wherein said first and second beam
pulses are so oriented in relation to each other that the
propagation paths of said beam pulses cross each other,
a receiver which is arranged to receive reflected parts of said first
beam pulse and which is arranged to receive reflected parts of
said second beam pulse, the parts reflected from said firstand
second beam pulses being reflected from said object which is
located on the propagation path of the first and the second beam
pulse, and
a signal processing unit which is arranged to detect said
object based on the parts reflected from said beam pulses
received by said receiver and, based on this detection, arranged
to control the dispensing of liquid, wherein the apparatus further
includes that said first beam pulse and said second beam pulse
are alternating in terms of time in relation to each other and
wherein said signal processing unit is arranged to detect said
object based on calculating proportion of a power level of the
reflected parts of the first pulse to a power level of the reflected
parts of the second pulse.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Perrin
Paese
Patterson
Ebert
US 5,862,844
US 6,067,673
US 6,770,869
DE 10 2007 052 700 A1
Jan. 26, 1999
May 30, 2000
Aug. 3, 2004
May 7, 2009
Appeal 2014-004183
Application 12/800,971
3

REJECTIONS
Claims are 1–6, 8–12 and 14 rejected under 35 U.S.C. § 102(b) as
being anticipated by Perrin and Paese.
Claims 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Perrin, Paese and Ebert.
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Perrin, Paese, and Patterson.

OPINION
The Examiner incorrectly relies on a disclosure in Perrin that simply
states that each one of sensors 46, 48, 50 produces a signal indicative of the
received radiation to meet a limitation requiring “calculating [a] proportion
of a power level of the reflected parts of the first pulse to a power level of
the reflected parts of the second pulse.” Appeal Br. I–1, Claims App.; Final
Act. 3; Ans. 7–8. As Appellants correctly argue, indicating a signal for each
pulse or beam of radiation does not necessarily mean that the prior-art
device of Perrin calculates a proportion of one pulse to the other. Appeal Br.
14. In the Answer the Examiner additionally points out that the calculating
limitation in claims 1 and 8 is functional. Ans. 8–9. Although that is
correct, these functional limitations imply something about the structure of
the claimed apparatus, namely that it requires at least a processing unit
arranged to perform this calculating function, by programming, circuitry, or
some other structure. See, e.g., In re Noll, 545 F. 2d 141,148 (CCPA 1976)
(“Appellant’s programmed machine is structurally different from a machine
without that program”).
Appeal 2014-004183
Application 12/800,971
4
The Examiner has not demonstrated the presence of any such structure
for performing the recited calculating function. To the extent it is the
Examiner’s position that the Perrin control could be reprogrammed or
otherwise modified to perform the recited functions that is not a legally
sufficient basis to conclude these limitations are met by Perrin’s control
circuit. See Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F. 3d 1376,
1380-82 (Fed. Cir. 2011) (“[T]he apparatus as provided must be “capable”
of performing the recited function, not that it might later be modified to
perform that function”). As the Examiner correctly recognizes (Ans. 9), the
Examiner’s reasoning concerning the functional nature of the challenged
limitations is not applicable to method claim 9. We therefore agree with
Appellants that the Examiner has failed to demonstrate that independent
claims 1, 8 and 9, and therefore those claims depending therefrom, are
unpatentable based on the cited prior-art.

DECISION
The Examiner’s rejections are reversed.

REVERSED