Ex Parte Clark

Patent Trial and Appeal Board

Mar 10, 2014

12191297 (P.T.A.B. Mar. 10, 2014)

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.
12/191,297 08/13/2008 Thomas Clark CLAR001US1 1530
64275 7590 03/11/2014
Da Vinci's Notebook, LLC
12841 Braemar Village Plaza
No. 52
Bristow, VA 20136
EXAMINER
KAYES, SEAN PHILLIP
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
03/11/2014 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 THOMAS CLARK

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Appeal 2012-002068
Application 12/191,297
Technology Center 2800
________________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002068
Application 12/191,297

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 21-26, 28-31, 33, 35, 36, 39, and 40. We have jurisdiction under 35
U.S.C. § 6.
Appellant’s claimed invention relates to a timepiece incorporated into
wearable medication apparatus. Spec. ¶ 0006. Claims 21 and 28 is
representative (key limitations in dispute italicized):
21. A watch for holding medication, said watch
comprising:
a housing defining a medication cavity and having a
housing protrusion radius;
a lid, selectively movable to a closed position that covers
said housing and an open position that exposes said medication
cavity, with an outer surface bearing a display with a timepiece
and an alphanumeric data screen portion;
an insulation membrane, affixed to said lid and housing,
dimensioned to seal said medication cavity when said lid
occupies said closed position such that said medication is
substantially impervious to denaturing environmental effects;
a substantially solid band, affixed to said housing, for
affixation to a user and with a band protrusion radius less than
said housing protrusion radius;
a circuit in signaled communication with said lid;
memory, in signaled communication with said lid,
configured to store a series of lid actuation data and at least one
alarm time; and
an alarm in signaled communication with said memory,
wherein housing includes a housing exterior sidewall,
and said sidewall and said band form a collectively sloped
dimension, such that said sidewall includes a variable girth that
increases relative to said lid.
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28. A medication system comprising:
a watch comprising:
a housing defining a medication cavity and having a
housing protrusion radius;
a lid, selectively movable to a closed position that covers
said housing and an open position that exposes said medication
cavity, with an outer surface bearing a display with a timepiece
and an alphanumeric data screen portion;
an insulation membrane, affixed to said lid and housing,
dimensioned to seal said medication cavity when said lid
occupies said closed position such that said medication is
substantially impervious to denaturing environmental effects;
a substantially solid band, affixed to said housing, for
affixation to a user and with a band protrusion radius less than
said housing protrusion radius;
a circuit in signaled communication with said lid;
watch memory, in signaled communication with said lid,
configured to store a series of lid actuation data and at least one
alarm time;
an alarm in signaled communication with said memory;
and
a data port in signaled communication with said
memory[;]
and
a computer, in signaled communication with said data
port, with a computer memory and a graphic user interface
(GUI),
wherein said memory is configured to store a standard
time that differs from an set time depicted by said timepiece,
and said memory is configured to trigger said alarm according
to said standard time.
The Examiner relied on the following references in rejecting the
appealed subject matter:
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De la Huerga US 2003/0099158 A1 May 29, 2003
Ghoorahoo US 6,464,389 B1 Oct. 15, 2002
Wilson US 6,857,775 B1 Feb. 22, 20051
The Examiner maintains, and Appellant appeals, the rejection of
claims 21-26, 28-31, 33, 35, 36, 39, and 40 under 35 U.S.C. § 103(a) as
unpatentable over De la Huerga, Ghoorahoo, and Wilson.2 Appellant
separately argues independent claims 21, 28, and 35, argues the subject
matter common to independent claims 28 and 35, and relies on those same
arguments for dependent claims 22-26, 29-31, 36, 39, and 40. We select
claims 21 and 28 as representative; claims 22-26 will stand or fall together
with claim 21; claims 29-31, 35, 36, 39, and 40 will stand or fall together
with claim 28. See 37 C.F.R. § 41.37(c)(1)(vii).
OPINION
The dispositive issues in this appeal are:
1. Did the Examiner err in construing claim 21 as not specifying
whether the sloped sidewall surrounds an internal medication
cavity?
2. Did the Examiner err in construing claim 28 as not specifying
whether the standard time is a time zone differential time?
After review of the arguments and evidence presented by both
Appellant and the Examiner, we affirm the stated rejections for the reasons

1 The Examiner incorrectly identifies Wilson as US 7,857,775 on page 4 of
the Answer. This appears to be a harmless typographical error as the
Appellant correctly identifies Wilson on page 1 of the Appeal Brief.
2 The Examiner also maintains the rejection of claim 33 under 35 U.S.C.
§ 112, second paragraph, as indefinite because it depends from cancelled
claim 32 (Ans. 4). Because this rejection is not addressed by Appellant in
the Appeal Brief, we summarily affirm the rejection of claim 33.
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stated in the Answer, including the Response to Argument section. We add
the following primarily for emphasis.
Claim 21
It is the Examiner’s position that De la Huerga in view of Ghoorahoo
and Wilson suggest the subject matter of claim 21 for the reasons stated on
pages 5-7 and 13-18 of the Answer. The Examiner’s reason for modifying
the pill storage device and time tracker of De la Huerga with the pill
retaining watch of Ghoorahoo is “to configure a pill storage device and
tracking system which is portable and wearable on a wrist as taught by
Ghoorahoo.” Id. at 6. The Examiner’s reason for combining the modified
De la Huerga device with the sloped sidewall housing and corresponding
band taught by Wilson is “to achieve Wilson’s improvements with regard to
comfort and aesthetic design.” Id.
Appellant argues in the Appeal Brief that “[t]here is no teaching or
motivation within any cited reference to utilize sloping sidewalls to diffuse
the force of glancing contacts for wrist-mounted watches bearing interior
cavities with medication.” App. Br. 2. In the Reply Brief, Appellant
characterizes the Examiner’s observation that “the advantages of a sloped
sidewall are completely absent from the original disclosure” (Ans. 16) as
“offhandedly diminish[ing] the significance of Applicant’s disclosure of the
forces that may act upon the sidewalls of Applicant’s invention as Applicant
primarily discloses such structure in his Fig. 5.” Reply Br. 3. However,
Appellant cites neither to the claim nor the Specification to distinguish the
cited art of record in the same way that Appellant asserts the rejection is
deficient. Id. at 1 (“The Examiner can yet not point to any teaching or
motivation within any cited watch reference that utilizes sloping sidewalls to
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diffuse the force of glancing contacts for wrist-mounted watches bearing
interior cavities capable of storing medication.”)
We are not convinced that the Examiner improperly construed claim
21, and specifically, the “said sidewall and said band form a collectively
sloped dimension” to not require sloping sidewalls surrounding an internal
medication cavity (see Ans. 13). We are also not persuaded that the
Examiner’s stated rationale for combining De la Huerga’s pill storage device
and time tracker as modified by Ghoorahoo’s pill retaining watch with
Wilson’s watch structure is unreasonable.
Appellant does not dispute the Examiner’s findings regarding the
teachings of De la Huerga, Ghoorahoo, and Wilson. Indeed, Appellant
concedes that “Ghoorahoo does include a sloped section of his housing
sidewall” and discloses “a sidewall with a slight inward curvature.” Reply
Br. 2. Appellant agrees that Wilson’s watch “includes sloping walls for
purposes of aesthetics and comfort (App. Br. 2)” and that Ghoorahoo and De
la Huerga “include medication cavities” (id.). Appellant argues instead the
Examiner improperly combined the references because “there is no objective
evidence of a suggestion to combine the concept of a sloping sidewall with
the portion of a wristwatch that might store medication”. App. Br. 4.
Appellant also argues that “Applicant’s sloping sidewalls deal with a
problem different from Wilson.” Id. at 2. Applicant’s problem is said to be
“to minimize the effects of glancing forces against the lid of the hollow
housing” and “protect[] a repository for potentially life-saving medications.”
Id.
Appellant’s arguments are not persuasive because the reason for
combining prior art references need not be the same as the inventor’s
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purpose. See e.g., In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972) (noting
“[t]he fact that appellant uses [a chemical] for a different purpose does not
alter the conclusion that its use in a prior art composition [would have been]
prima facie obvious from the purpose disclosed in the references”). The
particular problem motivating the inventor “may be only one of many
addressed by the patent’s subject matter.” See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 420 (2007). As articulated by the Examiner, Wilson provides
a reason for the sloped dimension on a watch and band combination. Based
on the combined teachings of De la Huerga, Ghoorahoo, and Wilson, a
person of ordinary skill in the art would have reasonably expected that the
sloped dimension of Wilson’s housing and band would provide protection to
the components contained therein. See Ans. 13-14 (citing Wilson col. 3, ll.
15-23 “The primary purposes of case 110 are to receive timing element 120
and provide timing 120 with a protective housing.”).
Appellant’s argument that while Ghoorahoo teaches a sloped section
of the housing sidewall, it does not teach the sidewall is formed by an
integral combination of both the band and sidewall (Reply Br. 2) is not
persuasive because one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, Wilson is relied upon by
the Examiner for teaching a structure with sloped sidewalls that are
continuous with a watch band. Ans. 6.
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Claim 28
It is the Examiner’s position that De la Huerga in view of Ghoorahoo
suggests the subject matter of claim 28 for the reasons stated on pages 8-9
and 18-19 of the Answer.
Appellant argues that claim 28 “claim[s] an alarm that is capable of
operating according to the home time of the wearer rather than a time set on
the timepiece.” App. Br. 4. Appellant contends that “[n]owhere is it
disclosed that De Le Huerga [sic] timepiece is utilizing two times in
assisting the wearer with a medication schedule.” Id. 5. Appellant does not
argue in either the Appeal Brief or the Reply Brief the combination of De Le
Huerga and Ghoorahoo over which claim 28 is rejected in the Answer and
the Office Action mailed August 3, 2010. See generally App. Br, Reply Br.
We are not convinced that the Examiner improperly construed claim
28, and specifically, the “said memory is configured to store a standard time
that differs from an [sic] set time depicted by said timepiece”. Appellant’s
argument is not supported by the plain language of claim 28. Moreover,
Appellant’s Specification reflects that configuring the alarm “to remind a
user to take their medication according to their home time zone (present by
user)” is one embodiment of the invention. See Spec. ¶ 0022. “[T]he PTO
must give claims their broadest reasonable construction consistent with the
specification . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
“[A]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” Id. We must be careful not to read a particular embodiment
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appearing in the written description into the claim if the claim language is
broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”) The
challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003). Thus, Appellant’s Specification supports the Examiner’s broadest
reasonable interpretation that “the claims necessitate nothing more than a
device which provides an alarm at a stored and designated time, according to
a stored time in a memory.” Ans. 19. The Examiner finds that “De La
Huerga teaches a current time indicator according to a real time clock” (id.
at 18 citing De la Huerga Fig. 2 item 132) and “triggering an alarm when the
stored alarm time is reached” (id. citing De la Huerga Abstract, ¶ 129).
Therefore, the combination of De la Huerga and Ghoorahoo encompasses
the subject matter of claim 28 as properly construed by the Examiner.
For the foregoing reasons, we affirm all of the Examiner’s rejections.
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)(v).
AFFIRMED

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