Ex Parte Britt

Board of Patent Appeals and Interferences

Feb 18, 2011

10729269 (B.P.A.I. Feb. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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30046 7590 02/25/20 1 1
Albuquerque Engineer District
ATTN: CESPA-OC
41 0 1 Jefferson P1. NE
Albuquerque, NM 87 109-3434
APPLICATION NO.
EXAMINER
BUCHANAN, CHRISTOPHER R
101729,269 12/08/2003 John T. Britt COE-564 3258
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CONFIRMATION NO.
02/25/2011 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte JOHN T. BRITT
Appeal 2010-00644 1
Application 101729,269
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-00644 1
Application 101729,269
STATEMENT OF THE CASE
John T. Britt (Appellant) seeks our review under 35 U.S.C. 5 134
(2002) of the final rejection of claims 1-18. We have jurisdiction under 35
U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
THE INVENTION
The invention relates to automating the collection, integration,
analysis, reporting and archiving of data. Specification 2:6-7.
Claim 8, reproduced below, is illustrative of the subject matter on
appeal.
8. A method for managing collection of samples and the
collecting, preserving, integrating, processing and communication of
information at locations remote from a commercial power source and
from a variety of sources, comprising:
establishing requirements for said managing;
selecting a mix of hardware and software to meet said
requirements;
procuring said hardware and software; and
integrating said hardware and software to implement said
method.
2 Our decision will make reference to the Appellant's Appeal Brief ("Br.,"
filed May 27, 2009) and the Examiner's Answer ("Answer," mailed Sep. 16,
2009).
Appeal 2010-00644 1
Application 101729,269
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability :
Alexander US 6,574,561 B2 Jan. 3,2003
Curkendall US 6,346,885 B1 Feb. 12,2002
The following rejection is before us for review:
1. Claims 1-18 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Alexander and Curkendall
ISSUES
Did the Examiner err in rejecting the claims as unpatentable over
Alexander and Curkendall?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The Appellant argued claims 1-18 as a group (Br. 9-35). There are
two independent claims: "configuration" claim 1 and "method" claim 8. We
select claim 8 (see supra) as the representative claim for this group, and the
remaining claims 1-7 and 9-18 stand or fall with claim 8. 37 C.F.R.
5 41.37(c)(l)(vii) (2007).
The Examiner addressed every claim limitation with citations to
corresponding disclosures in the cited references. The Examiner's
characterization of the scope and content of the cited references appear to be
Appeal 2010-00644 1
Application 101729,269
accurate and have not been challenged by the Appellant. (The Appellant's
argument is directed to the reasoning for combining the references to reach
the claimed invention.) The Examiner takes the position that, like claim 1
(Answer 5), Alexander discloses all the claim limitations in claim 8 but for
"includ[ing] a device to provide coded labels to facilitate tracking of
samples, for which Curkendall is relied upon" (Answer 4). Accordingly, the
Examiner established the difference between the claimed subject matter and
Alexander. However, it should be noted that while this is a limitation in
claim 1, it is not a limitation in claim 8 (as reproduced in the Appendix A of
the Brief). Accordingly, we take the Examiner's position as to claim 8 to be
that Alexander discloses all its claim limitations. The Examiner found,
based on the claim 1 subject matter, that
[i]t would have been obvious to one of ordinary skill in the art
at the time of the invention to modify the system of Alexander
to include a device to provide coded labels for samples, as
taught by Curkendall, to enable efficient, accurate gathering,
cataloging, and communication of field data (see Curkendall,
col. 1, line 14-2 1, Alexander, abstract).
Answer 4-5. Thus the Examiner articulated an apparent reasoning with
logical underpinning in support of the legal conclusion of obviousness. All
the factual inquiries for determining obviousness having been addressed and
an apparent reasoning for combining the references to reach the claimed
subject matter having been provided, we are satisfied that the Examiner has
met the initial burden of presenting a prima facie case of obviousness.
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) ("On appeal to the Board, an applicant can overcome a rejection
[under 5 1031 by showing insufficient evidence of prima facie obviousness
Appeal 2010-00644 1
Application 101729,269
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.") (quoting In re Rouflet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). In that regard, the Appellant challenges the Examiner's reasoning
for combining the references to reach the claimed subject matter. The
Appellant appears to be arguing that one of ordinary skill in the art with
Alexander and Curkendall in hand would not have been led to the claimed
invention.
The difficulty with the Appellant's argument is that it is not
commensurate in scope with what is claimed. Throughout the Brief, the
Appellant repeatedly challenges the Examiner's rationale for combining the
references on the basis of limitations not present in the claims. This is
especially the case when looking at claim 8. For example, the Appellant's
key argument is that the claims provide a "unique configuration for
automating the management of sample taking from various instrumentation
using a system[] that is man-packable in the field." Br. 25. The problem said
to be solved by the claimed invention is that it automates what was
previously done by hand. But claim 8 is not directed to a configuration.
While claim 1 is directed to a configuration, there is no mention of it being
"man-packable in the field." Even if one of ordinary skill in the art would
construe the claim element "portable device" to be "man-packable in the
field," claim 1 does not limit the scope of the "configuration" to the portable
device. As claimed, the configuration "comprises" the portable device.
Another example; the Appellant argues that "none of the references
(Alexander et al., Curkendall) make a reference of the need to automate the
process of collecting samples thereby eliminating or reducing error-prone
manual entry and manual data manipulation." Br. 21. However, claim 8, for
Appeal 2010-00644 1
Application 101729,269
example, makes no mention of automating the process of collecting samples.
A mix of hardware and software is integrated in the method of managing
collection of samples and collecting of information but the scope of the
claim is not limited so as to limit the collecting so as to perform it via
automation. As for claim 1, it describes a configuration comprising a
portable device which "may be used for said collecting." Claim 1 also does
not limit the collecting so as to perform it via automation; the collecting may
be accomplished by hand with the configuration performing other tasks. We
find that "[mlany of appellant's arguments fail from the outset because, . . .
they are not based on limitations appearing in the claims . . . ." In re Self,
671 F.2d 1344,1348 (CCPA 1982).
Finally, notwithstanding that the Appellant's argument is not
commensurate in scope with what is claimed, it is generally obvious to
automate a known manual procedure. Our reviewing court stated in
Leapfrog Enterprises Znc. v. Fisher-Price Znc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) that one of ordinary skill in the art would have found it obvious to
combine an old electromechanical device with electronic circuitry
to update it using modern electronic components in order to
gain the commonly understood benefits of such adaptation,
such as decreased size, increased reliability, simplified
operation, and reduced cost. . . . The combination is thus the
adaptation of an old idea or invention . . . using newer
technology that is commonly available and understood in the
art.
Id at 1162. Moreover, as to claim 8, the electronic configuration is simple
mix of hardware and software to meet [established requirements for
"managing collection of samples and the collecting, preserving, integrating,
processing and communication of information at locations remote from a
commercial power source and from a variety of sources"]."
Appeal 2010-00644 1
Application 101729,269
Appellant argues that his rejected claims rest upon an automatic
mechanism. The mere statement that a device is to be operated
automatically instead of by hand, without a claim specifying
any particular automatic mechanism, is not the statement of an
invention. Marchand v. Ernken, 132 U. S. 195, 1291 . . . ; In re
Gill, 17 C.C.P.A. (Patents) 700, 36 F. (2d) 128.
In re Rundell, 48 F.2d 958, 959 (CCPA 1931).
DECISION
The decision of the Examiner to reject claims 1-18 is affirmed.
AFFIRMED
mev
Albuquerque Engineer District
ATTN: CESPA-OC
4 10 1 Jefferson P1. NE
Albuquerque NM 87 109-3434