Ex Parte ColemanDownload PDFPatent Trial and Appeal BoardFeb 5, 201513476258 (P.T.A.B. Feb. 5, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/476,258 05/2112012 DENNIS R. COLEMAN 35809 7590 02/06/2015 W. PATRICK QUAST, ESQ. P.O. BOX 444 W ALDWICK, NJ 07463 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. P-1765-12 1079 EXAMINER LOUIS,LATOYAM ART UNIT PAPER NUMBER 3771 MAIL DATE DELIVERY MODE 02/06/2015 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 DENNIS R. COLEMAN Appeal 2015-000731 Application 13/476,258 Technology Center 3700 Before: CHARLES N. GREENHUT, L YNNE H. BROWNE, and LISA M. GUIlT, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Dennis R. Coleman (Appellant) appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-7, 15, 18, and 19. Claims 8-14, 16, 17, and 20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a voice responsive fluid delivery, controlling, and monitoring system and method. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal 2015-000731 Application 13/476,258 1. A voice responsive fluid delivery and monitoring system comprising the following elements: (a) a storage means having a quantity of fluid stored therein; (b) means for releasing the fluid from said storage means; (c) means for delivering any fluid released from said storage means by said means for releasing, to the near vicinity of a person intending to use the fluid that is released; (d) means for monitoring the status of at least a first characteristic of the fluid stored in the storage means; (e) a voice responsive means; (f) a first communication link disposed between said VOIce responsive means and said means for releasing the fluid; (g) a second communication link disposed between said voice responsive means and said means for monitoring the status of at least a first characteristic of the stored fluid; (h) a third communication link disposed between said voice responsive means and a mouth area of an operator of said system whereby the transmission of voice commands from the operator to said voice responsive means is facilitated, wherein the operator and the person intending to use the fluid that is released are one and the same person; said voice responsive means adapted to respond to a first set of voice commands to produce a corresponding first set of electrical signals, said first set of electrical signals supplied via said first communication link to said means for releasing the fluid, said means for releasing the fluid adapted to respond to respective ones of said first set of electrical signals in a corresponding respective way whereby the flow of fluid through said means for delivery is at least initiated, controlled at respective predetermined rates and stopped; said voice responsive means adapted to respond to a second set of voice commands transmitted to said voice responsive means by way of said third communication link by the operator, to produce a corresponding second set of electrical signals, said second set of electrical signals supplied via said second communication link to said means for monitoring the status of at least a first characteristic of the stored fluid, said means for monitoring the status of at least a first characteristic of the stored fluid adapted to respond to respective ones of said second set of electrical signals in a corresponding respective 2 Appeal 2015-000731 Application 13/476,258 way whereby a respective one of a third set of electrical signals evidencing the status of said at least first characteristic is generated by said means for monitoring, said respective one of said third set of electrical signals communicated to said voice responsive means by way of said second communication link; said voice responsive means adapted to generate a further respective signal for said respective one of said third set of electrical signals; and, (i) a fourth communication link disposed between an ear of the operator and said voice responsive means, whereby said further respective signal for said respective one of said third set of electrical signals is converted to a respective audible sound and transmitted to an area in near proximity to the ear, where at said further respective audible sound is detectable by the ear, wherein all of said elements comprising said system are physically located in place on or in close proximity to the operator such that the system is carried in its entirety along with the operator and is adapted to be operable on an eye and hands- free basis. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Collins Cooper Jorczak Kong Wolf Warren Kwok Radivojevic US 4,342,725 US 2002/0166557 Al US 2005/0126571 Al US 2007/0004969 Al US 2007/0197881 Al US 2009/0000618 Al US 2009/0293875 Al US 201010263664 Al REJECTIONS Aug. 3,1982 Nov. 14,2002 June 16, 2005 Jan. 4,2007 Aug. 23, 2007 Jan. 1,2009 Dec. 3,2009 Oct. 21, 2010 1. Claims 1--4, 6, 15, and 19 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Jorczak, Kwok, Wolf, Cooper, and Warren. 3 Appeal 2015-000731 Application 13/476,258 H. Claims 5 and 7 stand rejected under 35 D.S.C. §103(a) as being unpatentable over Jorczak, Kwok, Wolf, Cooper, Warren, Radivojevic, and Kong. IH. Claim 18 stands rejected under 35 D.S.C. §103(a) as being unpatentable over Jorczak, Wolf, Cooper, Warren, and Collins. OPINION As an initial matter we note that the instant Appeal Brief is unique in that "upon the insistence of the applicant" (App. Br., Argument Secion, p. 1) it contains more than eleven (11) pages of "Applicant's Narrative." Id. at 1- 12. Much of this narrative is not responsive to the rejections as articulated by the Examiner because nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F .2d 1091, 1097, (Fed. Cir. 1986). In addition, we note that although it is preferable for the fact finder to specify the level of skill it has found to apply to the invention at issue, the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown. Okajima v. Bourdeau 261 F.3d 1350, 1355 (Fed. Cir. 2001) (citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,163 (Fed.Cir.1985)). We identify four arguments in this narrative that are responsive to the rejections. First, Appellant argues that Jorczak "teaches away" from the Coleman patent [application]." App. Br. 3. Second, Appellant argues that Kwok, Wolf, Cooper, Warren, Radivojevic, and Kong are not analogous art. 4 Appeal 2015-000731 Application 13/476,258 Id. at 1, 4, 6, 7, 8, and 9. Third, Appellant argues that the Examiner simply states that: The Coleman invention would have been obvious to a person of ordinary skill with no reasoning or analysis whatsoever except: to provide enhanced control (Kwok); to provide efficient and convenient information retrieval (Wolf); to provide enhanced feedback versatility to provide for instances in which a user's visual attention is unavailable (Cooper); or, to facilitate ease of home use and maneuverability (Warren). App. Br. 6. Fourth, Appellant argues that the Examiner has applied the wrong standard for determining who is a person of ordinary skill in the art. See App. Br. 11-12. Appellant further elaborates on the first and second arguments in the Points of Argument and Other Arguments sections of the Appeal Brief. We will address all four of these arguments infra. The Person of Ordinary Skill in the Art Appellant contends that "[a] person of ordinary skill in the art is also presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights, it makes no difference which." App. Br. 11 (citing Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448,454 (Fed. Cir. 1985). This is not the law. "[ A] person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR v. Teleflex, 550 D.S. 398,421 (2007). 5 Appeal 2015-000731 Application 13/476,258 Analogous Art Appellant argues that "[t]he threshold question to be resolved is whether 1 orczak or any of the cited references ... satisfy either prong of the analogous art test." App. Br. 14. Appellant correctly notes that the first "test for analogous art requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention's subject matter in the patent application, including the embodiments, function, and structure of the claimed invention." Id. (citing In re Bigio, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004)). 10rczak: Appellant argues that 10rczak is not in the same field of endeavor as the claimed invention by identifying limitations of claim 1 not found in 10rczak and pointing to unclaimed features described in the Specification. See App. Br. 15-21. Appellant further argues that 10rczak is not in the same field of endeavor by applying principles of anticipation and concluding that 10rczak does not anticipate the claims. Id. Then, Appellant concludes that the field of endeavor of the claimed invention is actually narrower than the invention. See Id. at 21-22. We do not adopt Appellant's definition of the field of endeavor which is so narrow as to preclude hypothetical devices which would meet the limitations of Appellant's claims. We note that the Specification states that "[t]he invention relates to a system and method for delivering oxygen and/or clean air or other fluids."l Spec. 1. The fluid is described as being delivered, for example, to provide the user with supplemental oxygen (i.e. for breathing purposes). Id. We 1 We are cognizant of the preferred embodiments described in the Specification, but field of endeavor must encompass all embodiments of the invention. 6 Appeal 2015-000731 Application 13/476,258 further note that independent claim 1 is directed to "[a] voice responsive fluid delivery and monitoring system" and independent claim 15 is directed to "[a] method ... for activating, controlling, delivering and monitoring a fluid providing means." App. Br. 1, 12, elms. App'x. In addition, we note that the structure set forth in figure 1 is very similar to the structure set forth in 10rczak's figure 1, which is described as a fluid regulation system. 10rczak, ,-r 20. The Examiner determines that the field of endeavor of the claimed invention is "air delivery devices for delivering air to a user to meet an individual's needs." Ans. 15. Given the facts noted supra, we find that the Examiner's characterization of the field of endeavor is also overly narrow to the extent that it excludes all fluids other than air, and overly broad in that it appears to encompass a user's need for air for activities other than breathing purposes. Neither the Specification nor the claims limit the invention to the delivery of air. Rather, both the Specification and claims are directed to the broader field of fluid delivery devices. Furthermore, the Specification and claims do not contemplate other uses for the fluid other than for enhancing the user's breathing. Thus, we determine that the field of endeavor is fluid delivery devices for delivering fluids to a user to enhance his or her breathing. 10rczak's fluid regulation system is a device that delivers air (Jorczak, ,-r 41) to a user to enhance his or her breathing. Thus, 10rczak is within the field of Applicant's endeavor and is analogous art. Kwok: Appellant argues that Kwok is not in Appellant's field of endeavor because K wok "is not a fluid flow machine at all but one which 'provides continuous positive airway pressure during sleep. '" App. Br. 24 (citing 7 Appeal 2015-000731 Application 13/476,258 Abstr., l. 5). Appellant's argument is not persuasive because in Kwok continuous positive airway pressure is created by the blower which delivers a supply of air to the user. Kwok,,-r 60. Thus, Kwok is a fluid delivery device which delivers air to enhance the user's breathing. Thus, Kwok is within Appellant's field of endeavor and is analogous art. Wolf: Appellant argues that Wolf is not in Appellant's field of endeavor because Wolf "relates to health monitoring systems which are 'capable of enhancing the quality of life for individuals whose mobility or self-care capabilities have been limited due to age or disease. '" App. Br. 25 (citing Wolf, ,-r 15). Based on this argument, Appellant further argues that Wolf is nonanalogous art. However, even if a reference is in a different field of endeavor than the invention, the reference is not non-analogous art if it "is reasonably pertinent to the particular problem with which the inventor is involved." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (internal quotations omitted). The Examiner finds that Wolf teaches "using voice recognition technology to send information requests to a monitoring sensor." Ans. 16. Based on this finding, the Examiner concludes that Wolf "is pertinent to the problem to be solved." Id. The Specification identifies one of the problems with which the inventor is concerned as "a hands and eyes-free, voice- activated system and method." See e.g. Spec. 1. Thus, Wolf is reasonably pertinent to a problem with which the inventor is involved and satisfies the second analogous art test. Cooper: Appellant argues that Cooper is nonanalogous art because "[i]t has nothing whatsoever to do with controlling the flow of a fluid. It's intended 8 Appeal 2015-000731 Application 13/476,258 purposes have nothing to do with the Coleman patent [application]." App. Br. 26. As with his arguments pertaining to Wolf discussed supra, Appellant does not address the second test for analogous art. The Examiner finds that Cooper "is directed to remote control of equipment via voice commands (abstract) and provides audible feedback to a user to provide clarification." Ans. 17 (citing Cooper, ,-r 47,11. 1---6). Based on this finding, the Examiner concludes that "Cooper is reasonably pertinent to the problem to be solved and is analogous art." Id. As discussed supra, the provision of a voice-activated system and method is one of the problems with which the inventor was concerned. We understand the Examiner by this finding and the conclusion drawn there from, to have determined that the remote control of equipment via voice command and providing audible feedback are specific problems with which the inventor is involved. Accordingly, Cooper satisfies the second analogous art test. Warren: Appellant argues that "Warren teaches a portable, fluid delivery system" which is not in Appellant's field of endeavor. App. Br. 26. As discussed supra, we do not adopt Appellant's definition of the field of endeavor. Warren is an oxygen delivery system to enhance the user's breathing. See e.g. Warren, ,-r,-r 2, 4, 6. Thus, Warren is in Appellant's field of en deav or. Radivojevic: Appellant argues that Radivojevic is nonanalogous art because "the Radivojevic cell phone in no way enables the user to control or monitor the oxygen delivery device." App. Br. 8. Appellant's argument is not convincing, because Radivojevic is a portable oxygen delivery device to 9 Appeal 2015-000731 Application 13/476,258 enhance the user's breathing. See e.g. Radivojevic, ,-r,-r 1, 6. Thus, Radivojevic is in Appellant's field of endeavor. Kong: Appellant argues that Kong is not analogous art because "Kong has nothing to do with the delivery ofa fluid." App. Br. 9. The Examiner explains that Kong is reasonably pertinent to the problem of using voice recognition technology in cell phones. Claim 5 requires that "at least some part of said voice responsive means is contained in a Smartphone." App. Br. 11, Clms. App'x. Thus, the Examiner correctly determined that using voice recognition technology in cell phones is a problem with which the claimed invention, and by extension the inventor, is involved. Accordingly, Kong satisfies the second analogous art test. Identification of Unknown Problem Appellant argues that "Applicant has recognized a hitherto unknown problem" (App. Br. 27) relying on In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed Cir. 2008), for the proposition that the lack of recognition in the prior art of the flaws of the prior art that prompted the modification is sufficient to demonstrate the nonobviousness of the claimed invention. Id. at 27-28. Such is not the law. See KSR at 420 (it is error to "hold[] that courts and patent examiners should look only to the problem the patentee was trying to solve."). Rather, "[u]nder the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." KSR at 420. Further, the court in Omeprazole identified other factors beyond the lack of recognition in the prior art. For example, the court found that the proposed modification of adding the 10 Appeal 2015-000731 Application 13/476,258 subcoating would not have been expected to confer any particular desirable property to the final product; rather, the final product obtained according to the proposed modifications would merely have been expected to have the same functional properties as the prior art product. Omeprazole at 1380-81. Therefore, Appellant's reliance on Omeprazole is misplaced. Alleged Lack of Critical Elements in Jorczak Appellant argues that for many circumstances, an individual is not the sole operator and intended beneficiary of the 10rczak invention (App. Br. 30); however, Appellant's argument is not indicative of error. The Examiner correctly finds that 10rczak discloses an "operator and the person intending to use the fluid that is released are one and the same person." Ans. 3 (citing 10rczak, ,-r 34, 11. 1-15) ("the invention fulfills the need for a fluid regulation system that allows an individual to control, remotely or otherwise, the delivery of fluid"). Appellant further argues that 10rczak does not teach "a purposely, 'hands free' operational system." App. Br. 30. Appellant's argument is not commensurate in scope with the claims. For example, claim 1 merely requires a system that "is adapted to be operable on an eye and hands-free basis." App. Br. 11, elms. App'x. Furthermore, although the Specification does not explicitly define what devices are considered to be operable on an eye and hands-free basis, a VUI and Bluetooth® enabled Smartphone is specifically mentioned in paragraph 87 as a mechanism "intended to broadly apply to [] hands-free and eyes-free voice activated control and monitoring." Spec. 22; see also Abstr. Appellant does not adequately explain why a VUI and Bluetooth® enabled Smartphone is adapted to be operable on an eye and hands-free basis while, 10rczak's sound activated portable remote control unit is not. Thus, Appellant's argument is not persuasive. 11 Appeal 2015-000731 Application 13/476,258 Appellant's argument that 10rczak "teaches away" from a hands-free device (App. Br. 31) is unpersuasive because "teaching away" requires that the reference "criticize, discredit, or otherwise discourage" the use of other alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (internal citations omitted). We will not read into a reference a teaching away from a proposed combination when no such language exists. See Dystar Textilfarben GmbH v. CH. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). In addition, Appellant's argument that the claims require separate "eyes-free" monitoring is not well taken. See App. Br. 31. As discussed supra, the Specification discloses the same mechanism for eye and hands- free control and monitoring. Bidirectional Communication - Second Set of Voice Commands Appellant argues that 10rczak fails to disclose "communications in both directions." App. Br. 32. As "communication in both directions" is not claimed per se, we understand Appellant to be arguing that 10rczak fails to disclose a "voice responsive means adapted to respond to a second set of voice commands transmitted to said voice responsive means by way of said third communication link by the operator" as required by claim 1. App. Br. 10, Clms. App 'x. Appellant is correct; however this is not indicative of error, as the rejection does not rely on 10rczak to meet this limitation. Rather, the rejection relies upon the combined teachings of Kw ok, Wolf, and 10rczak to meet this limitation of claim 1. Thus, Appellant's argument is not 12 Appeal 2015-000731 Application 13/476,258 responsive to the rejection as articulated by the Examiner and is not persuasIve. Sufficiency of the Rationale Articulated by the Examiner As noted supra, Appellant argues that the Examiner provides no reasoning for the proposed modifications, then presents a concise summary of each of the reasons for each of the proposed modifications based on Kwok, Wolf, Cooper, and Warren. See App. Br. 6. Appellant does not explain why the Examiner's reasoning is flawed. Appellant simply concludes that the Examiner's reasoning "fall [ s] far short of the dictate in the KSR case as set forth in the Guidelines." Id. Thus, Appellant's argument is unpersuasive. Reply Brief We note that Appellant's comments pertaining to the prosecution history and items that are not claimed on pages 2-3 of the Reply Brief are not arguments. We further note that our analysis supra does not rely on a wristwatch embodiment of J orczak' s device which Appellant argues that the Examiner introduces for the first time in the Examiner's Answer. Reply Br. 4. Accordingly, we need not address this argument. In addition, Appellant's merely repeat their argument pertaining to the level of ordinary skill in the art (Id. at 5), which is addressed supra. In accordance with our rules, we will not consider "[a]ny argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer ... unless good cause is shown." 37 C.F.R. § 41.41(b)(2). Accordingly, we do not consider any new arguments raise for the first time in the Specific Comments Re Examiner's Answer section of the Reply Brief as Appellant has made no 13 Appeal 2015-000731 Application 13/476,258 showing as to why such arguments should be considered. All other arguments, have been address supra. Conclusion F or the reasons set forth above, Appellant has not apprised us of error with respect to any of the rejections of any of the claims. We sustain the Examiner's decision rejecting claims 1--4, 6, 15, and 19 as unpatentable over the combined teachings of Jorczak, Kwok, Wolf, Cooper and Warren; we sustain the Examiner's decision rejecting claims 5 and 7 as un patentable over the combined teachings of Jorczak, Kwok, Wolf, Cooper, Warren, Radivojeci, and Kong; and we sustain the Examiner's decision rejecting claim 18 as unpatentable over the combined teachings of Jorczak, Kwok, Wolf, Cooper, Warren, and Collins. DECISION The Examiner's rejections of claims 1-7, 15, 18, and 19 are AFFIRrvIED. 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)(1 )(iv). AFFIRMED JRG 14 Copy with citationCopy as parenthetical citation