Ex Parte Berman

Patent Trial and Appeal Board

Feb 19, 2016

12722178 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121722,178 03/11/2010
57726 7590 02/23/2016
MILLER, MATTHIAS & HULL LLP
ONE NORTH FRANKLIN STREET
SUITE 2350
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Michele Berman
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.
28951150001 2568
EXAMINER
MISKA,VITW
ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
02/23/2016 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):
bmatthias@millermatthiashull.com
mloye@millermatthiashull.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELE BERMAN
Appeal2014-003740
Application 12/722, 178
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 filed an appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-16. We have jurisdiction under
35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
The claims on appeal are directed to child-friendly clock devices (see,
e.g., claim 1). Appellant discloses that children between the ages of2 and 5
1 Our decision refers to the Specification filed Mar. 11, 2010 (Spec.),
Appellant's Appeal Brief filed Aug. 20, 2013 (Br.), and the Examiner's
Answer mailed Nov. 27, 2013 (Ans.).
2 Appellant identifies the real party of interest as Zazoo Kids, Inc. Br. 3.
Appeal2014-003740
Application 12/722, 178
have difficulty reading traditional clocks and are disinclined to remain in bed
until a reasonable hour. Spec. i-f 3. Appellant discloses this problem is
exacerbated in summer months because sunrise can occur before it is time to
wake up and sundown can occur after bedtime. Id. Young children need a
simple, clear mechanism to determine whether they should get up out of bed
or stay in bed and try to fall back asleep. Spec. i-f 5. In view of this,
Appellant discloses a clock device allowing a child to wake up, observe the
clock device, and see a digital photo/image indicating whether it is time to
wake up or time to stay in bed. Spec. i-f 7.
Independent claim 1 is illustrative of the subject matter on appeal.
Claim 1 is reproduced from the Claims Appendix of the Appeal Brief:
1. A child-friendly clock device for conveying waking time
to children, the clock device comprising:
a photo area for displaying a digital image;
an image input mechanism for receiving image data from
a user; and
a controller for recefving a its er selection of tvvo or more
images and for receiving at least one alarm time, the controller
being adapted to switch a display in the photo area at the alarm
time from a first one of the images, which indicates night time,
to a second one of the images, indicating day time.
Br. 12 (emphasis and indents added).
The claims on appeal stand rejected as follows:
(1) claims 1-12, 15, and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Smith3 and Gorden; 4
3 Smith, US 2009/0016168 Al, published Jan. 15, 2009.
4 Gorden, US 6,795,377 B2, issued Sept. 21, 2004.
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Application 12/722, 178
(2) claim 13 under 35 U.S.C. § 103(a) as being unpatentable over
Smith and Gorden and further in view of Chan; 5 and
(3) claim 14 under 35 U.S.C. § 103(a) as being unpatentable over
Smith and Gorden and further in view of Clapper. 6
OPINION
Rejection (1)
The Examiner finds Smith discloses a child-friendly clock device
comprising a photo area for displaying a digital image. Ans. 2. The
Examiner finds Smith does not specifically disclose a controller or an image
input mechanism for receiving image data from a user but determines a
controller and image input mechanism would be required for operating the
clock disclosed by Smith. Ans. 3. In particular, the Examiner cites Smith's
disclosure of programmable clock features and, in view of this, determines
the clock would include a controller. Id. With regard to the image input
mechanism, the Examiner cites Smith's disclosure of clock embodiments
including programming capability for inputting images in paragraph 34, and
Smith's disclosure of Universal Serial Bus (USB) ports for receiving
downloaded programming instructions in paragraph 68. Id. Based on this
evidence, the Examiner determines the clock of Smith would include an
image input mechanism for receiving image data from a user. Id.
The Examiner finds Gorden discloses an alarm clock having an image
input mechanism and a controller, citing the memory devices 44 and CPU 42
disclosed by Gorden. Ans. 3--4. The Examiner concludes it would have
5 Chan, US 6,443,615 Bl, issued Sept. 3, 2002.
6 Clapper, US 2004/0150635 Al, published Aug. 5, 2004.
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Appeal2014-003740
Application 12/722, 178
been obvious to modify the clock of Smith to include the controller and
image input mechanism of Gorden. Ans. 4.
Appellant argues the missing elements of Smith (i.e., the image input
mechanism and controller) are not necessary features in Smith's clock, citing
case law relating to inherency. Br. 9-10. Moreover, Appellant contends
Smith describes a functioning clock without disclosing a controller or image
input mechanism. Br. 10.
Appellant's arguments are not persuasive. As an initial matter, we
note that the appropriate question under the current § 103 rejection is not
whether a reference inherently discloses a claimed feature but whether the
claimed feature would have been obvious. Moreover, Appellant has not met
their burden of providing evidence or argument rebutting the Examiner's
case of unpatentability. "[T]he examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming forward with
evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992).
Here, the Examiner finds Smith discloses a clock that can be
programmed to display a sun image at a pre-determined time and switch
images in the display of the clock, such as by switching between an image
indicating night time and an image indicating day time. Ans. 2. The
disclosure of Smith supports this finding because Smith discloses a clock
that can display an image to indicate a time and an image may be
programmed to be displayed at a predetermined time, such as by turning off
an image of a star and turning on an image of a sun. Smith i-fi-134, 38, and
39. With regard to the image input mechanism of claim 1, Smith's
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Application 12/722, 178
suggestion of a programming capability for inputting images, and the
disclosure of a USB port that may be included in a clock for the reception of
downloaded programming instructions supports the Examiner's finding.
Smith i-fi-134 and 68. The evidence supports the determinations that the clock
of Smith would include a controller in order to perform the programmed
functions described by Smith and would include an image input mechanism.
Gorden further supports the Examiner's position because Gorden
discloses a clock having input/output ports 30 and 32, which can be USB
ports; a CPU 42; and at least one memory device 44 that can be a removable
or non-removable device, such as flash memory, and can contain image data,
such as photographic image data. Gorden col. 8, 11. 34--37 and 49---65. In
other words, Gorden demonstrates it is known for a clock to include a
controller and an input/output port, such as a USB port, capable of
interfacing with a memory device to receive image data. Appellant's naked
assertion that Smith does not require an image input mechanism or a
controller does not direct us to any reversible error in the Examiner's
findings or determinations.
Appellant further contends the clock of Gorden "is not indicated to
accept user input." Br. 10. In particular, Appellant asserts the "memory
device 44 in Gorden is not said to be usable to provide user input," and "the
class of memory devices mentioned here clearly indicates that this is not a
user input port." Id. These arguments seem to conflate two structures
recited in claim 1: the image input mechanism and the controller. To the
extent Appellant is arguing that Gorden fails to teach "a controller for
receiving a user selection of two or more images and for receiving at least
one alarm time," as recited in claim 1, the Examiner has determined the
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Application 12/722, 178
clock of Smith would include a controller, which is substantiated by the
disclosure of Gorden, as discussed above. Appellant has not provided
evidence or argument to rebut the Examiner's case ofunpatentability. To
the extent Appellant is arguing that Gorden fails to teach "an image input
mechanism for receiving image data from a user," the Examiner determines
each of Smith and Gorden discloses a USB port, as discussed above.
Therefore, Appellant's argument does not direct us to any reversible error.
Claims 2-12, 15, and 16 have not been argued separately and
therefore fall with claim 1. Br. 10.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103 rejection of claims 1-12, 15, and
16 under 35 U.S.C. § 103(a) as being unpatentable over Smith and Gorden.
Rejections (2) and (3)
Claims 13 and 14 have not been argued separately. For the reasons
discussed above and those set forth in the Examiner's Answer, we sustain
the Examiner's§ 103 rejections of claims 13 and 14.
DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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