10528731 (P.T.A.B. Feb. 19, 2014)

Ex Parte Appel et al

Patent Trial and Appeal BoardFeb 19, 2014

10528731 (P.T.A.B. Feb. 19, 2014)

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. 10/528,731 03/22/2005 Mirko Appel 2002P15759WOUS 8587 7590 02/20/2014 Siemens Corporation Intellectual Property Departement 170 Wood Avenue South Iselin, NJ 08830 EXAMINER LABBEES, EDNY ART UNIT PAPER NUMBER 2682 MAIL DATE DELIVERY MODE 02/20/2014 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 MIRKO APPEL, WOLFGANG FICK, and UWE GERK ____________________ Appeal 2011-004287 Application 10/528,7311 Technology Center 2600 ____________________ Before JEAN R. HOMERE, MARC S. HOFF, and JOHNNY A. KUMAR, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 12-22.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellants’ invention is a method for monitoring a technical installation. The galvanic skin reflex or other physiological reactions can be 1 The real party in interest is Siemens Aktiengesellschaft. 2 Claims 1-11 have been cancelled. Appeal 2011-004287 Application 10/528,731 2 used to determine the state of a maintenance worker when observing a plant component (Spec. 2). A sensor device acquires at least one such physiological reaction. An assessment tool records reaction information acquired with the sensor, and analyzes the information to diagnose an operational condition of a component of the technical installation (claim 12). Claim 12 is exemplary of the claims on appeal: 12. A method for monitoring a technical installation, comprising: using a sensor to acquire a physiological reaction of a human during an inspection tour of a portion of the technical installation, using an assessment tool to record reaction information acquired with the sensor; and analyzing the information recorded with the assessment tool to diagnose an operational condition of a component of the technical installation. The Examiner relies upon the following prior art in rejecting the claims on appeal: Torch US 6,542,081 B2 Apr. 1, 2003 Claims 12-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Torch. Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed Sep. 1, 2010) and the Examiner’s Answer (“Ans.,” mailed Oct. 20, 2010) for their respective details. Appeal 2011-004287 Application 10/528,731 3 ISSUE Appellants argue, inter alia, that Torch does not concern the monitoring of a technical installation based on a physiological reaction of a human being (App. Br. 6). Since Torch only monitors the condition of a human eye, reason Appellants, Torch cannot teach the claimed limitation of diagnosing an operation condition of a component of a technical installation (App. Br. 6). Does Torch disclose or suggest analyzing information recorded with the assessment tool to diagnose an operational condition of a component of the technical installation (claim 12) or to determine a condition of a portion of the technical installation (claim 18)? PRINCIPLES OF LAW Section 103(a) forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”). Appeal 2011-004287 Application 10/528,731 4 ANALYSIS CLAIMS 12-22 Claim 12 recites “monitoring a technical installation, comprising: using a sensor to acquire a physiological reaction of a human . . . using an assessment tool to record reaction information acquired with the sensor[,] and analyzing the information recorded with the assessment tool to diagnose an operational condition of a component of the technical installation.” Claim 18 recites: performing a diagnosis of a technical installation, comprising: providing a sensor device . . . acquiring a physiological reaction from a human with the device . . . using an assessment tool to record reaction information acquired with the sensor and analyzing information recorded with the assessment tool to determine a condition of a portion of the technical installation. The Examiner finds that Torch teaches monitoring a technical installation, and diagnosing the operational condition of a component of the technical installation (Ans. 4-5). The Examiner agrees with Appellants that the person or user in Torch is not considered the claimed “technical installation” (Ans. 8). We do not agree with the Examiner that Torch monitors a technical installation, or diagnoses the operational condition of a component of the technical installation. Instead, we agree with Appellants that Torch discloses “a system for monitoring movement of the human eye to monitor fatigue and other states of a person” (App. Br. 6, citing Torch col. 1, ll. 15- 21). Torch does also teach communicating with and/or controlling devices based on movement of the eye or eyelid, or other components of the eye Appeal 2011-004287 Application 10/528,731 5 (App. Br. 6). For example, the measured eye data may be used to determine the driver’s drowsiness and, as a result, “control the vehicle, e.g., adjust the vehicle’s speed or even turn the vehicle’s engine off” (Torch, col. 11, ll. 10- 12). The Examiner has failed to identify any disclosure in Torch of analyzing information concerning movement of the eye or eyelid (the claimed “information recorded with the assessment tool”) to diagnose, or determine the condition of machinery (the claimed “component of the technical installation”). We find that Torch does not teach all the limitations of the invention relied upon by the Examiner. Therefore, we conclude that the Examiner erred in rejecting claims 12-22 under § 103 over Torch. We do not sustain the Examiner’s rejection. CONCLUSION Torch does not disclose or suggest analyzing information recorded with the assessment tool to diagnose an operational condition of a component of the technical installation (claim 12) or to determine a condition of a portion of the technical installation (claim 18). DECISION The Examiner’s rejection of claims 12-22 is reversed. REVERSED msc