Ex Parte Araujo et al

Patent Trial and Appeal Board

Aug 28, 2017

12889725 (P.T.A.B. Aug. 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.
12/889,725 09/24/2010 JOSEPH A. ARAUJO 1406-P003001 6866
60984 7590
Cotman IP Law Group, PLC
35 Hugus Alley, Suite 210
Pasadena, CA 91103
EXAMINER
BURGESS, MARC R
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
u spto. docketing @ cotmanip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH A. ARAUJO, NORTON W. MILGRAM,
and PAOLO MONGILLO
Appeal 2016-003944
Application 12/889,725
Technology Center 3600
Before JILL D. HILL, LISA M. GUIJT, and PAUL J. KORNICZKY,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
decision1 rejecting claims 15—20 and 27—38. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appeal is taken from the Final Office Action dated March 23, 2015
(“Final Act.”).
Appeal 2016-003944
Application 12/889,725
CLAIMED SUBJECT MATTER
Claims 15 and 31 are the independent claims on appeal. Claim 15,
reproduced below, is illustrative of the subject matter on appeal.
15. An apparatus for cognitive assessment and training
of an animal subject comprising:
a plurality of side panel coupled together and to a base
panel to form a testing enclosure to isolate an animal subject
from at least one external stimuli, wherein said plurality of side
panels form a perimeter of said testing enclosure;
a divider assembly coupled with a second one and a fourth
one of the plurality of side panels to divide the testing chamber
into a stimuli chamber in a front end of said enclosure and subject
chamber in a rear end of said enclosure, wherein said subject
chamber provides housing for said animal subject, said divider
assembly comprising a plurality of vertical bars spaced
substantially apart such as to prevent the animal subject from
completely entering the stimuli chamber from said subject
chamber, but allow the animal subject to reach into the stimuli
chamber with one or more limbs to interact with objects in the
stimuli chamber, wherein said stimuli chamber includes an
access port for replenishment of supplies in said stimuli chamber
and
a trial assembly located inside said stimuli chamber and
configured to display a plurality of stimuli to said subject animal
located inside said subject chamber, wherein at least one target
stimuli selected from the plurality of stimuli is associated with a
reward, wherein the trial assembly is further configured to allow
for replacement of the plurality of stimuli and changing of a
target object associated with the reward through the stimuli
chamber access port.
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Application 12/889,725
REJECTIONS
I. Claims 15, 18, 20, 31, 32, and 34 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Coulboum (US 3,830,201; issued Aug.
20, 1974) and Goldberg (US 7,487,744 Bl; issued Feb. 10, 2009).
II. Claims 16 and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Coulboum, Goldberg, and Sachs (US 3,662,713; issued
May 16, 1972).
III. Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Coulboum, Goldberg, and Watson (US 6,273,027 Bl;
issued Aug. 14, 2001).
IV. Claims 27—30 and 35—38 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Coulboum, Goldberg, Watson, and Jenkins
(US 6,629,844 Bl; issued Oct. 7, 2003).
ANALYSIS
Rejection I
Independent Claims 15 and 31 — The Claimed Divider Assembly
Regarding independent claims 15 and 31, the Examiner finds, inter
alia, that Coulboum teaches a modular test cage 10 for animals, including
side walls coupled together and to a base. Final Act. 3. The Examiner
determines that “Coulboum does not teach the test chamber comprising a
divider assembly,” and relies on Goldberg for teaching “divider assembly
20, 13,18.” Id. at 3-A. In particular, the Examiner finds that Goldberg
teaches that the divider assembly can have several configurations, including
vertical, spaced bars. See id. at 5 (citing Goldberg 6:11—16, Fig. 19); Ans. 8
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(citing Fig. 19, numeral 1903). The Examiner determines that “the ability to
reach through the bars is only a matter of bar sizing and spacing” and that
it would have been an obvious matter of design choice to size the
bars such that an animal subject could reach through (but not
enter) the other chamber in order to interact with the other
chamber, since such a modification would have involved a mere
change in the size of a component.
Final Act. 4—5. In further support, the Examiner determines that “[a] change
in size is generally recognized as being within the level of ordinary skill in
the art.” Id. at 5 (citation omitted). The Examiner reasons that it would
have been obvious to modify Coulboum’s testing chamber with a divider
assembly, as taught by Goldberg, “to perform a test in which it is desired to
separate the animal from the testing chamber.” Final Act. 5.
Appellants argue that Goldberg’s walls 20, 13 are slidable and opaque
or transparent, “without vertical bars spatially placed to allow the animal
subject to reach objects in the stimuli chamber with its limbs.” Br. 6, 7.
However, Appellants’ argument does not address the Examiner’s finding
that Goldberg discloses a divider wall having bars, as an alternative to being
opaque or transparent. See Final Act. 5 (citing Goldberg 6:11—16, (“bars
1903”), Fig. 19)); see also Goldberg 4:27—33. Further, as correctly
determined by the Examiner, “Goldberg is relied upon for the teaching of a
divider assembly[;] it does not necessarily need to incorporate rollers.” Ans.
9. The Examiner also correctly determines that
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
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invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
Id. (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellants argue that “Goldberg’s wall 20 is used to teach the animal
subject about smell,” and therefore, Goldberg is functionally different from
Appellants’ claimed invention. Br. 6—7. However, claims directed to an
apparatus must be distinguished from the prior art in terms of structure
rather than function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477—78
(Fed. Cir. 1997). Moreover, this teaching in Goldberg relates to the opaque
divider wall 20, and not to the divider wall comprised of vertical, spaced
bars. See Goldberg 4:27—30.
Appellants also argue that Goldberg fails to disclose the divider wall
coupled to side walls of the cage. Br. 7. However, at least in one
embodiment, Goldberg discloses coupling the walls to a frame via tabs,
screws, and holes (see Goldberg 6:34—36), and Coulboum discloses that
“rear wall 12 is coupled to the base 11 in a permanent manner at 14 by
suitable means, as by welding, bolting, or the like” (Coulboum 4:45 47).
Therefore, we determine that it would be within the knowledge of one of
ordinary skill in the art to couple a wall to a side wall (as disclosed in
Goldberg and Coulboum), and specifically, to couple a divider wall made of
bars (as taught by Goldberg) to a wall 16, 18 of Coulboum’s cage, to divide
Coulboum’s test cage into a stimuli chamber and a testing chamber, as
claimed. We remind Appellants that an obviousness analysis “need not seek
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out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Infl Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). The Court further explained that “[a] person
of ordinary skill in the art is also a person of ordinary creativity, not an
automaton.” Id. at 421.
Appellants further argue that Goldberg teaches a “partial wall segment
such that it does not encompass the distance from one side wall to the other.”
Br. 7 (citing Goldberg 4:56—57 (referencing “[qjuarter panels”)). However,
Goldberg expressly states that “[w]all segments can be full wall or partial
wall segments.” Goldberg 4:35—36.
Appellants also argue that the Examiner’s proposed modification
would render Coulboum unsatisfactory for its intended purpose and/or
change the principal operation of Coulboum, because adding a divider wall
to Coulboum’s test cage would prevent an animal from entering container
39, which is configured as an isolation chamber. Br. 7—8. However,
Coulboum’s modular panels are adaptable, and container 39 is optional.
See, e.g., Coulboum 6:4—14 (“Other types of modular test panels can be
provided including ... a modular panel 137 . . . having entrance 138 into a
container 39.”). Thus, the Examiner’s proposed modification would not
render Coulboum unsatisfactory for its intended purpose (i.e., providing a
test cage for animals) or change the principal operation of Coulboum (i.e.,
testing animals with module test panels), when Coulboum’s modular test
wall 22 is designed without optional container 39.
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Appellants also argue that “neither Coulbourn nor Goldberg teach or
suggest a desire for separating animals from the test panels,” and that the
Examiner’s proposed combination “require[s] a significant structural
modification and change in functionality of the divider wall 18.” Br. 8
(emphasis added). However, the argument appears to urge us to apply a
strict teaching, suggestion, or motivation (TSM) test for obviousness. Rigid
application of the TSM test was explicitly disavowed by the Supreme Court
in KSR, 550 U.S. at 415. Notwithstanding, Goldberg expressly teaches the
desirability of controlling the level of an animal’s accessibility or exposure
to something in an adjacent chamber. See Goldberg 4:27—32 (“Each
horizontal interstage 19 can be custom configured with combinations of
divider walls to provide increasing level of introduction being opaque
(smell) wall 20, transparent (visual) wall 13, and two screens (or bars, not
shown) 18 fine (safe grooming) and coarse (full touch).”). Thus, the
Examiner’s rationale is grounded in factual support, when viewed in
combination with Coulbourn’s test cage. We also disagree that the
Examiner’s modification requires “a significant structural modification and
change in functionality” of Goldberg’s divider wall—as discussed supra,
coupling a wall to side walls is described in the references, and Goldberg’s
divider wall would still function to divide one space from another.
Appellants further argue that “Goldberg in no way teaches or suggests
using a divider wall that provides access only to the limbs of the animal
subject to interact [with] objects in a second chamber.” Br. 8; see also Br. 9
(arguing that Goldberg does not relate to configuring the divider wall to
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prevent the animal subject from entering, but allowing the animal subject to
reach into, the stimuli chamber with one or more limbs, as claimed).
However, as set forth supra, Appellants’ argument does not address the
Examiner’s finding that “bar sizing and spacing” is an “obvious matter of
design choice.” Final Act. 4. Further, Goldberg expressly recognizes that
the divider wall may be designed to allow variable access based on need.
See Goldberg 4:30—32 (“two screen (or bars, not shown) 18 fine (safe
grooming) and coarse (full touch)” (emphasis added)).
Appellants also argue that the Examiner’s proposed modification
“would render Goldberg unsatisfactory for its intended purpose,” however,
the Examiner does not propose a modification to Goldberg. Br. 8.
To the extent Appellants are arguing that Goldberg teaches away from
the Examiner’s modification, including configuring the spacing of the bars
as an obvious matter of design choice, to meet the limitations of claim 1 and
15, we disagree. See Br. 9 (“Goldberg teaches the opposite [of the claimed
subject matter;] that is, total physical isolation of the animal subject.”). As
discussed supra, Goldberg teaches “providing an] increasing level of
introduction” by designing divider walls that range from opaque, to
transparent, to screens (or bars) having different mesh sizes, e.g., fine or
coarse. Goldberg 4:27—32. Moreover, prior art does not teach away from
claimed subject matter merely by disclosing a different solution to a similar
problem unless the prior art also criticizes, discredits or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Here, Goldberg in no way criticizes, discredits, or
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otherwise discourages adding a divider wall to a test cage, such as test cage
10 of Coulboum, but rather, as discussed supra, encourages the modular use
of divider walls, with varying degree of accessibility, based on need.
Independent claims 15 and 31 — The Claimed Trial Assembly
Regarding independent claims 15 and 31, the Examiner finds, inter
alia, that Coulboum teaches “a trial assembly 39, 41, 44” configured as
claimed. Final Act. 3.
Appellants argue that “Coulboum’s container 39 and test panels 41
and 44 are not structurally the same as the claimed trial assembly.” Br. 10.
In particular, Appellants contend that Coulboum’s container 39 is housing
for food without a display, as compared to the claimed trial assembly, which
is located inside the stimuli chamber and configured to display a stimuli to
an animal located inside the subject chamber. Id. However, as discussed
supra, Coulboum’s container 39 is optional, and other test panels that
comprise Coulboum’s modular test wall 22 are disclosed as displaying
stimuli to an animal. See Coulboum 5:41—43 (“The modular test panel 41
can be a device for testing the response of a bird and can include three
illuminated switches 42—42.”).
Appellants also argue that Coulboum’s test panels 41, 44 are for
testing the response of a bird with illuminated switches, with no selected
target stimuli associated with a reward, as claimed. The Examiner correctly
responds that the claim limitation of “wherein at least one target stimuli
selected from the plurality of stimuli is associated with a reward,” is a
recitation of intended use that does not patentably distinguish the claimed
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apparatus in terms of a structural difference. Ans. 11. In other words, the
claimed wherein clause does not distinguish the structure of the claimed
invention from Coulboum, as modified. Regarding apparatus claims
generally, it is well settled that “apparatus claims cover what a device is, not
what a device does” {Hewlett-Packard Co. v. Bausch &Lomb Inc., 909 F.2d
1464, 1468 (Fed.Cir. 1990)), and that claims directed to an apparatus must
be distinguished from the prior art in terms of structure rather than function
{see In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)); cf., e.g., Appeal
Br. 15—16 (Claims App.) (claim 27 reciting “a reward dispenser”).
Accordingly, we sustain the Examiner’s rejection of independent
claims 15 and 31. Appellants chose not to present separate arguments for
the patentability of claims 18, 20, 32, and 34, which depend from claims 15
or 31, and therefore, we also sustain the Examiner’s rejection of these
dependent claims. See Br. 4—13.
Rejection II
Appellants do not present arguments for the patentability of claims 16
and 33; consequently, Appellants have waived any argument of error, and
we summarily sustain the Examiner’s rejection. See MPEP § 1205.02, 9th
ed., Rev. 11, 2013 (Nov. 2015) (“If a ground of rejection stated by the
examiner is not addressed in the appellant's brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it”); Br. 4—13.
Rejection III
Appellants do not present arguments for the patentability of claims 17
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and 19; consequently, as supported supra, Appellants have waived any
argument of error, and we summarily sustain the Examiner’s rejection.
Rejection IV
The Examiner finds, inter alia, that neither Coulboum nor Goldberg
teach the limitations of claims 27 and 35. Final Act. 7—8. The Examiner
relies on Watson for disclosing a reward dispenser, processor and non-
transitory computer-readable medium, and on Jenkins for teaching, inter
alia, execution of the computer-executable instructions by the processor to
cause the trial assembly to display randomized trials to the animal,
determine a response, transmit a reward signal to the reward dispenser, and
generate a cognitive assessment score. Id. at 8—9 (citations omitted). In
particular, the Examiner determines that Jenkins teaches, in relevant part: (i)
displaying randomized trials (citing Jenkins 15:55—57); (ii) determining a
response from the subject (citing Jenkins, Fig. 13 (numeral 131 [8]); (iii)
transmitting a reward signal to the reward dispenser (citing Jenkins, Fig. 13
(numeral 1320)); and (iv) generating a cognitive assessment store (citing
Jenkins Fig. 13 (numeral 1318)).
Regarding claims 27 and 35, Appellants argue that Jenkins is
improperly relied on by the Examiner, because Jenkins is non-analogous art.
Br. 11. In support, Appellants determine that Jenkins is directed to training
cognitive memory systems in humans, as compared to the claimed subject
matter, which is for cognitive assessment and training of animals, and also
that “one of ordinary skill in the art [would not] look to adapt training
methods for humans, as taught b[y] Jenkins in animals.” Id.
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The proper two-prong test to define the scope of analogous prior art is
(1) “whether the art is from the same field of endeavor, regardless of the
problem addressed,” and (2) even “if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011) (internal citation omitted). Appellants’
Specification identifies the field of endeavor of Appellants’ invention as
“cognitive assessment and training,” and “[m]ore particularly, but not by
way of limitation, ... a system and method for cognitive assessment and
training of an animal.” Spec. 11. We determine that the field of endeavor
of Jenkin’s invention is “the field of education in human subjects, and more
specifically to a computer program for training the cognitive and memory
processing systems in human subjects.” Jenkins 1:24—28. Thus, we
determine that Jenkins is in the same field of endeavor of Appellants’
invention, namely, “cognitive assessment and training,” and therefore,
Jenkins is properly relied on by the Examiner. Further, a particular problem
with which Appellants are involved is a lack of “objective methods for the
assessment of learning-related cognitive functions in animals” (Spec. 1 5),
and because Jenkins involves “[a]n apparatus and method for training the
cognitive and memory systems in a subject” (Jenkins, Abstract), we also
determine that Jenkins is reasonably relevant to the Appellants’ particular
problem.
Regarding claims 27 and 35, Appellants argue that Jenkins’ Block
Commander program, as disclosed in Jenkins at column 16, from lines 22 to
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32, does not disclose “presenting] a plurality of randomized stimuli to an
animal subject on a display screen,” wherein “[t]he animal’s response is
used to calculate a cognitive assessment score and correct responses are
rewarded,” as claimed. Br. 11—12. However, Appellants’ argument does
not address the Examiner’s findings as set forth in the rejection. First, as set
forth supra, the Examiner relies on Coulboum for disclosing cognitive
assessment and training of an animal. See Final Act. 12. Second, as relied
on by the Examiner, Jenkins discloses that “[e]ach of the prompts are
presented to the user in random order” (Jenkins 15:55—57), and determining
if a response is correct {id. at 15:59-61, referencing Fig. 13 (“a
determination is made as to whether there have been 90% correct
responses.”)). As also relied on by the Examiner, Jenkins discloses that “[i]f
there have been 90% correct responses,... the subject is shown a reward.”
Id. at 15:62—66. Thus, a preponderance of evidence supports the Examiner’s
findings, and Appellants’ recitation of the claim does not apprise us of error
in the Examiner’s findings. See In re Lovin, 99 USPQ2d 1373, 1379 (Fed.
Cir. 2011) (holding that the Board had reasonably interpreted 37 C.F.R. §
41.37(c)(l)(vii) as requiring “more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art”).
Accordingly, we sustain the Examiner’s rejection of claims 27 and 35.
Appellants chose not to present arguments for the patentability of claims 28—
30 and 36—38, which depend from claims 27 and 35. Br. 12. Accordingly,
we also sustain the Examiner’s rejection claims 28—30 and 36—38.
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DECISION
The Examiner’s rejections of claims 15—20 and 27—38 under 35
U.S.C. § 103(a) are AFFIRMED.
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.
§ 1.136(a)(l)(iv).
AFFIRMED
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