Ex Parte Burwell

Patent Trial and Appeal Board

Dec 20, 2016

12919167 (P.T.A.B. Dec. 20, 2016)

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.
12/919,167 11/30/2010 Rebecca Burwell B117 P01889-US 3939
3017 7590 12/20/2016
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5THFLOOR
PROVIDENCE, RI02903
EXAMINER
VALENTI, ANDREA M
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
12/20/2016 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 REBECCA BURWELL
Appeal 2015-002405
Application 12/919,167
Technology Center 3600
Before ANNETTE R. REIMERS, JILL D. HILL, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1—34. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to an apparatus and method for assessing
visual learning. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An exploratory test apparatus for assessing visual learning in
mammals, comprising:
a test apparatus having a floor;
Appeal 2015-002405
Application 12/919,167
a projector positioned outside the apparatus for projecting
a discrete image of stimuli used in performing tasks associated
with assessing visual learning on the floor of the test apparatus;
and
a means for rewarding a mammal within said apparatus for
correctly performing said visual learning task.
REJECTIONS
Claims 2, 8, and 13 are rejected under 35U.S.C. § 112 second
paragraph as being indefinite.
Claims 1—34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Coulboum (US 3,830,201, iss. Aug. 20, 1974) and
Mizuno (JP 2000-122175A, pub. Apr. 28, 2000).
OPINION
35 U.S.C. §112
Appellant does not contest the rejection of claims 2, 8, and 13 under
35 U.S.C. § 112, second paragraph. See Br. 8. Accordingly, we summarily
sustain this rejection.
35 U.S.C. § 103(a)
Claims 1 and 17 are independent. Appellant argues all of the claims
together. See Br. 8—11. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Coulboum teaches the majority of the
limitations of claim 1. Final Act. 3. The Examiner further finds that
“Coulboum teaches an image is projected, but is silent on explicitly teaching
a projector positioned outside the apparatus the image is projected, on the
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Application 12/919,167
floor of the test apparatus.” Id. Accordingly, the Examiner relies on
Mizuno for “project[ing] an image on the floor of an apparatus” and finds
that combining Coulboum and Mizuno would be obvious. Id. at 3^4.
Appellant argues that the disclosure of Coulboum is not sufficiently
specific with regards to “assessing visual learning” as required by the
claims. Br. 8—9. Though Coulboum does not use the term “assessing visual
learning,” Appellant does not explain why the portions of Coulboum cited
by the Examiner do not teach a testing apparatus or projectors that are used
for “assessing visual learning.” For example, Coulboum discusses specific
visual stimulus/testing devices such as lamp displays and projector pattern
displays that are used in Coulboum’s test cage for animals. Coulboum, col.
2:6—8. Appellant does not explain why these specific tests are not for
“assessing visual learning” and thus, why the disclosed cage and projector
are also not for “assessing visual learning.”
Appellant also argues that the “housing for food” of Coulboum is not
the claimed “reward mechanism that rewards the test animal upon correct
performance of the visual task.” Br. 9. But, Appellant does not explain why
a housing of food cannot also be the reward mechanism. Further, the
Examiner’s position appears to be consistent with Appellant’s Specification
which discusses food as a reward. Spec. 2, 12, 13; see also Final Act. 3;
Ans. 6. Appellant states that the “the claims include specific stmctures that
reflect and capture the actual function of the present invention” (Br. 10), but
does not identify what these stmctures are or how they are different than the
prior art. Merely reciting the language of a claim and asserting that the cited
prior art references do not disclose that limitation is insufficient. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
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Appeal 2015-002405
Application 12/919,167
reasonably interpreted Rule 41.37 to require 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.”).
For these reasons, we are not apprised of error in the rejection of
claim 1. Claim 17, which includes similar limitations as claim 1, and is not
argued separately, falls for these same reasons. Claims 2—16 and 18—34
depend from the independent claims and are not separately argued and
therefore fall with claims 1 and 17 for the same reasons.
DECISION
The Examiner’s rejections of claims 1—34 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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