Ex Parte Alper et al

Patent Trials and Appeals Board

Jun 4, 2019

13926864 - (D) (P.T.A.B. Jun. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/926,864 06/25/2013
23446 7590 06/06/2019
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Paul Alper
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.
24697US03 6597
EXAMINER
BROWN JR, HOW ARDD
ART UNIT PAPER NUMBER
2488
NOTIFICATION DATE DELIVERY MODE
06/06/2019 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ALPER, JOHN HINES,
DEAN PHILIP LIMBERT, and
BRYAN GEORGE FRANK ANDERSON
Appeal2018-002452
Application 13/926,864
Technology Center 2400
Before JEREMY J. CURCURI, JUSTIN BUSCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-15. Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b ).
Claims 1-3, 7, 8, 11, 12, 14, and 15 are rejected under 35 U.S.C.
§ 102 as anticipated by Dolan (US 2010/0173581 Al; July 8, 2010). Final
Act. 3-8.
Claims 4, 10, and 13 are rejected under 35 U.S.C. § 103 as obvious
over Dolan and Marley (US 6,062,421; May 16, 2000). Final Act. 9-11.
Claims 5 and 9 are rejected under 35 U.S.C. § 103 as obvious over
Dolan and LeBlond (US 2010/0153374 Al; June 17, 2010). Final Act. 11-
12.
Appeal2018-002452
Application 13/926,864
Claim 6 is rejected under 35 U.S.C. § 103 as obvious over Dolan and
Patterson (US 2007/0083385 Al; Apr. 12, 2007). Final Act. 12-13.
We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to "determining the compliance by
workers with best practices for hand product use." Spec. ,r 2. Claims 1 and
11 are illustrative and reproduced below, with key disputed limitations
emphasized:
1. A method for predetermining the benchmark number of
hand product uses for a target facility comprising:
identifying best practice recommendations for use of a
hand product within a studied facility based on workers'
activity within the studied facility;
determining a study benchmark number of hand product
uses for compliance in the studied facility during an observation
period with the identified best practice recommendations;
identifying studied facility characteristics of the studied
facility during the observation period;
identifying study relationships between studied facility
characteristics and the study benchmark number of hand
product uses;
determining target facility characteristics for the target
facility; and
determining a benchmark number of hand product uses
for the target facility for compliance with the identified best
practice recommendations based on study relationships and
target facility characteristics.
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Application 13/926,864
11. A method for monitoring compliance with best
practice recommendations for use of a hand product within a
target facility comprising:
identifying best practice recommendations for use of a
hand product that are based on workers' activity within a target
facility;
monitoring occurrences within the target facility for
which use of the hand product is recommended by the
identified best practice recommendations;
determining a benchmark use of the hand product based
at least in part on the monitored occurrences;
monitoring use of the hand product in the target facility;
and
comparing the use of the hand product in the target
facility to the benchmark use in the target facility.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
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Appeal2018-002452
Application 13/926,864
ANALYSIS
THE ANTICIPATION REJECTION OF CLAIMS 1-3, 7, 8, 11, 12, 14, AND 15 BY
DOLAN
Claim 1- Contentions
The Examiner finds Dolan describes all limitations of claim 1. Final
Act. 3-5. In particular, the Examiner finds Dolan's locating and positioning
hand hygiene dispensers for optimized usage teaches "determining a
benchmark number of hand product uses for the target facility for
compliance with the identified best practice recommendations based on
study relationships and target facility characteristics" as recited in claim 1.
Final Act. 4--5 ( citing Dolan ,r 8); see also Ans. 15 ( citing Dolan ,r 10).
Among other arguments, Appellants present the following principal
argument:
As set out above, claim 1 recites determining relationships
between facility characteristics and a benchmark number of hand
product uses in one facility, a studied facility, and, in the sixth
step of claim 1, using those relationships to determine a
benchmark number of hand product uses in another facility, a
target facility. The Final Action asserts that that step is disclosed
by Dolan at paragraph 8, stating "e.g. hand hygiene dispensers
are located and positioned in an environment in manners that are
conducive to and consistent with optimize usage of such
dispensers. Final Action at 6. As set out above, Dolan does not
disclose determining a benchmark at all. But further and specific
to this claim step, Dolan does not disclose use of any relationship
determined in one facility for hand product use in a different
facility. Dolan does not anticipate claim 1 for failure to disclose
use of a relationship determined in one facility to identify a
benchmark for a different facility.
App. Br. 16.
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Appeal2018-002452
Application 13/926,864
Claim 1- Our Review
Appellants' arguments persuade us that the Examiner erred in finding
Dolan teaches the key disputed limitation recited in claim 1.
Dolan discloses "[y Jet another aspect of the invention is the provision
of a method and apparatus for analysis and improvement of hand hygiene
practices wherein hand hygiene dispensers are located and positioned in an
environment in manners that are conducive to and consistent with optimized
usage of such dispensers." Dolan ,r 8.
Dolan further discloses "[ s ]till a further aspect of the invention is the
provision of a method and apparatus for analysis and improvement of hand
hygiene practices in which the physical positioning of hand hygiene
dispensers is determined by data correlating the usage of hand hygiene
dispensers with their position and location." Dolan ,r 10.
Thus, according to Dolan, there is a correlation between usage of
dispensers and location/position of dispensers. Dolan ,r 10. Further,
according to Dolan, dispensers are located/positioned to optimize usage.
Dolan ,r 8.
Turning to claim 1, claim 1 requires "a studied facility." Claim 1
further requires "a target facility." Thus, the language of claim 1 requires
two different facilities. Appellants' Specification also supports this
interpretation of the language of claim 1. See Spec. ,r 4 7 ( emphases added)
("Benchmark relationships are determined between the benchmarks
determined by observation and characteristics and activity of the facility.
Based on these benchmark relationships, benchmarks may be predetermined
for other facilities in which activities occur for which the guidelines apply
based on the characteristics and activity of the other facility for which
benchmark relationships have been determined.").
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Appeal2018-002452
Application 13/926,864
The key disputed limitation of claim 1 requires "a benchmark
number...for the target facility ... based on study relationships [between
studied facility characteristics and the study benchmark number of hand
product uses for compliance in the studied facility] and target facility
characteristics."
We find Dolan' s single facility does not teach a studied facility and a
target facility as recited in claim 1, and in particular, does not teach the key
disputed limitation of claim 1 which requires "a benchmark number ... for the
target facility ... based on study relationships [between studied facility
characteristics and the study benchmark number of hand product uses for
compliance in the studied facility] and target facility characteristics."
We, therefore, do not sustain the Examiner's rejection of claim 1.
We also do not sustain the Examiner's rejection of claims 2, 3, 7, and
8, which depend from claim 1.
Claim 11- Contentions
The Examiner finds Dolan describes all limitations of claim 11. Final
Act. 6-7. In particular, the Examiner finds Dolan's disclosure of correlation
between usage of dispensers and location/position of dispensers teaches
"comparing the use of the hand product in the target facility to the
benchmark use in the target facility" as recited in claim 11. Final Act. 7
(citing Dolan Abstract); see also Ans. 13 (citing Dolan ,r,r 8-12).
Among other arguments, Appellants present the following principal
argument:
The correlation described by Dolan's Abstract, and elsewhere
(e.g. ,r,r 34 - 38), is between use of the dispenser and dispenser
characteristics including dispenser position, location, and
orientation. Dolan does not disclose a benchmark at all, but
further and specific to this claim step, Dolan does not disclose
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Application 13/926,864
comparing dispenser use to a benchmark or any other desired
use. Dolan also does not anticipate claim 11 for failure to disclose
comparing dispenser use of [sic] a benchmark.
App. Br. 17.
Claim 11- Our Review
Appellants' arguments persuade us that the Examiner erred in finding
Dolan teaches the key disputed limitation recited in claim 11.
According to Dolan, there is a correlation between usage of dispensers
and location/position of dispensers. Dolan ,r 10. Further, according to Dolan,
dispensers are located/positioned to optimize usage. Dolan ,r 8.
The key disputed limitation of claim 11 requires "comparing the use
of the hand product in the target facility to the benchmark use in the target
facility."
Dolan discloses monitoring hand product use. See Dolan ,r 36
("monitoring may take place and continual data may be obtained, assessed
and quantified in order to continually improve upon the placement of
dispensers in order to facilitate their use").
However, we find Dolan does not teach comparing the data obtained
from the monitoring to a benchmark as required by claim 11. Instead, Dolan
teaches that use is correlated to dispenser location/position. Such correlation
involves no benchmark and, therefore, is not the same thing as the claimed
"comparing" limitation.
We, therefore, do not sustain the Examiner's rejection of claim 11.
We also do not sustain the Examiner's rejection of claims 12, 14, and
15.
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Appeal2018-002452
Application 13/926,864
THE REMAINING REJECTIONS
The Examiner does not find that any of the additional references cure
the deficiencies of Dolan discussed above.
We, therefore, do not sustain:
the Examiner's rejection of claims 4, 10, and 13 as obvious over
Dolan and Marley;
the Examiner's rejection of claims 5 and 9 as obvious over Dolan and
LeBlond;
the Examiner's rejection of claim 6 as obvious over Dolan and
Patterson.
DECISION
The Examiner's decision rejecting claims 1-15 is reversed. 1
REVERSED
1 That we do not sustain the Examiner's rejection of claims 1 and 11 should
not be viewed as an indication that the claims are patentable. Rather, our
decision is based only on the Examiner's improper reliance on Dolan. The
Patent Trial and Appeal Board is a review body, rather than a place of initial
examination. Therefore, we leave to the Examiner to determine whether
claims 1 and 11 are ineligible as directed to merely a mental process without
adding significantly more. See 35 U.S.C. § 101. We leave it to the Examiner
to ascertain the appropriateness of any further rejections, including under
35 U.S.C. § 101. Our decision not to enter a new ground of rejection should
not be considered an indication regarding the appropriateness of further
rejection or allowance of the non-rejected claims. See MPEP § 1213.03.
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