Ex Parte Chu

Patent Trial and Appeal Board

Nov 29, 2016

13769054 (P.T.A.B. Nov. 29, 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.
13/769,054 02/15/2013 Victor Chu 4123-045 2764
24112 7590 11/29/2016
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
KHAN, OMER S
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
11/29/2016 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 VICTOR CHU
____________

Appeal 2016-001323
Application 13/769,054
Technology Center 2600
____________

Before LARRY J. HUME, CATHERINE SHIANG, and
SCOTT B. HOWARD, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–5, 7–11, 13, 14, and 16–22, which are all the claims
pending and rejected in the application. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
Introduction
The disclosed and claimed inventions relate to digital labels and tags
for products. See generally Spec. 1. Claim 1 is exemplary:
1. A container for containing medicine, the container
comprising:
a bottle with a bottom and sidewalls that form an interior
space for holding the medicine;
a weight sensor integrated with the bottle and located at
the bottom of the bottle and configured to sense an amount of
remaining medicine within the bottle;
a cellular wireless communications interface integrated
with the bottle for communicating with a remote device; and
a processor integrated with the bottle and configured to
receive the amount of the remaining medicine within the bottle
and to wirelessly contact the remote device when a change is
detected in the amount of remaining medicine within the bottle;
the processor configured to communicate via text
messages over the cellular wireless communications interface,
the communications including a refill request text message
when the medicine remaining within the interior space reaches
a predetermined amount determined through the weight sensor.
References and Rejections1
Claims 1–5, 13, 14, 16–20, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yarin (US 2002/0027507 A1;
Mar. 7, 2002), Huerga (US 2001/0028308 A1; Oct. 11, 2001), and Edwards
(US 2005/0261864 A1; Nov. 24, 2005).

1 The Examiner withdrew rejections under 35 U.S.C. § 112, first and second
paragraphs. Ans. 17.
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Application 13/769,054

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Claims 7–11 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yarin, Huerga, Edwards, and Upadhye (US 2003/0074903
A1; Apr. 24, 2003).
ANALYSIS
On this record, and by a preponderance of evidence, the Examiner did
not err in rejecting claim 1.
We disagree with Appellant’s arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.2
Appellant argues the cited references do not teach “a cellular wireless
communications interface integrated with the bottle,” as recited in claim 1.
See App. Br. 9–13; Reply Br. 1–5. In particular, Appellant asserts none of
Yarin, Huerga, and Edwards individually teaches the disputed claim
limitation. See App. Br. 9–13.
Appellant has not persuaded us of error. Because the Examiner relies
on the combination of Yarin, Huerga, and Edwards to teach the disputed
claim limitation, Appellant cannot establish nonobviousness by attacking
each reference individually. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986); Ans. 18–21.
Further, Appellant has not persuasively shown the following argument
renders the Examiner’s findings incorrect:
Huerga appears to teach against placing a communication
interface on the vial. Huerga discloses that as many of the

2 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
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Application 13/769,054

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components as possible should be reused (¶ 0016). Thus,
positioning the various components including the
communications interface in the accessory would be a
beneficial design because these components can be reused.
Conversely, the vial is not reusable and therefore these
components would need to be replaced. Placement of a
communications interface in the vial would appear to go against
this teaching as the interface would have a limited life
expectancy.
App. Br. 12 (emphasis added).
As pointed out by the Examiner (Ans. 21), Appellant has not shown
the argument is commensurate with the scope of the claim, as Appellant has
not shown the disputed claim limitation requires any “vial.” To the extent
Appellant is arguing Huerga teaches away from the combination, Appellant
fails to provide the requisite analysis under the case law. Appellant fails to
assert—let alone show—one skilled in the art “would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Kahn, 441
F.3d 977, 990 (Fed. Cir. 2006).
In the Reply Brief and for the first time, Appellant belatedly argues
the Examiner’s reasoning as to why one skilled in the art would have
modified Yarin’s system (as modified by Huerga) to incorporate Edwards’
teachings is insufficient, and the cited references do not suggest such
modification. See Reply Br. 1–3. However, Appellant acknowledges the
Examiner previously provided similar reasoning in the Final Office Action.
See Reply Br. 2. Therefore, Appellant has waived such arguments because
they are untimely, and Appellant has not demonstrated any “good cause” for
the belated presentation. See 37 C.F.R. § 41.41(b)(2) (2012).
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In the Reply Brief and for the first time, Appellant belatedly argues
Edwards is not analogous art and as a result, it is improper to combine the
teachings of Edwards, Yarin, and Huerga. See Reply Br. 3–5. Appellant has
waived such arguments because they are untimely, and Appellant has not
demonstrated any “good cause” for the belated presentation. See 37 C.F.R.
§ 41.41(b)(2) (2012).
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claim 1.
For similar reasons, we sustain the Examiner’s rejection of
independent claims 7 and 13.
We also sustain the Examiner’s rejection of corresponding dependent
claims 2–5, 8–11, 14, and 16–22, which Appellant does not separately argue
with substantive contentions.
DECISION
We affirm the Examiner’s decision rejecting claims 1–5, 7–11, 13, 14,
and 16–22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED