Ex Parte Derrick

Patent Trial and Appeal Board

Jun 19, 2014

11702386 (P.T.A.B. Jun. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/702,386 02/06/2007 Patricia Derrick 8513
72528 7590 06/19/2014
PATRICIA DERRICK DBA BRAINPATHS
4186 MELODIA SONGO CT
LAS VEGAS, NV 89135
EXAMINER
THANH, QUANG D
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
06/19/2014 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 PATRICIA DERRICK
____________________

Appeal 2013-009301
Application 11/702,386
Technology Center 3700
____________________

Before: EDWARD A. BROWN, JAMES P. CALVE, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Patricia Derrick (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 66–79. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Claimed Subject Matter
Claims 66, 78, and 79 are the pending independent claims. Claim 66,
reproduced below, illustrates the claimed subject matter.
66. A repetitive motion tactile stimulation device
comprising:
a supporting structure configured to be in at least one of a
generally flat shape, a generally spherical shape, a box shape,
and a cylindrical shape, the supporting structure being
composed of plastic ensuring user-safety for all ages of users,
the supporting structure being sized to rest on a user's lap; and
a plurality of protruding dual contact portions disposed
on a surface of the supporting structure, each of the dual contact
portions forming at least one dual contact path, each dual
contact path including at least one of a continuous portion and
an intermittent portion, each of the dual contact portions being
composed of a texture defined by protrusions protruding from
the surface of the supporting structure;
wherein the stimulation device is configured to allow a
user to trace the dual contact paths on the surface of the
supporting structure using one or more fingertips.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Edwards US 6.669,478 B2 Dec. 30, 2003
Antoine US 2005/0267389 Dec. 1, 2005

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Rejections
Claims 73–75 and 77–79 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.1 Ans. 2.
Claims 73, 75, and 77–79 stand rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AlA), second paragraph, as being indefinite. Ans. 3.2
Claims 66–72 and 76 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Antoine. Ans. 4.
Claims 66–71 and 73–78 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Edwards. Ans. 6.
Claim 79 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Antoine. Ans. 10.
OPINION
Rejection of Claims 73–75 and 77–79 under 35 U.S.C. § 112, ¶ 1
Without a Path
The Examiner finds that the recitation in claim 73 of “textured
patterns in and around the paths for user to trace repeatedly without a path to
follow,” the recitation in claim 77 of “‘textures protruding from the surface
of the device without a path,’” and the recitation in claim 78 of “‘protruding
contact points are etched on the surface of the body without paths to
follow,’” were not described in the Specification to convey that Appellant
had possession of the claimed invention. Ans. 2 (emphasis omitted).

1 The Examiner withdrew the rejection of claims 73–74 and 78–79 under 35
U.S.C. 112(b) or 35 U.S.C. § 112, second paragraph (pre-AIA). Ans. 12.
2 Because claim 74 depends from claim 73, it should also have been
rejection under 35 U.S.C. § 112, second paragraph.
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Appellant argues that a description of how a user traces a pattern
“without a path” is repeatedly described in the Specification. Reply Br. 4.
Appellant, however, points to no particular portions of the Specification, and
we are unable to find any portions of the Specification that address
performing the repetitive motion without a path. Appellant also argues that
“[p]aths can be any length. Therefore, paths that are very short in length,
allow the fingertip to trace very short paths repeatedly. These short paths in
specific areas appear to be without a path.” Id. (emphasis omitted).
However, appearing to be without a path is not the same as “without a path.”
We are not persuaded by the argument. We find no disclosure in
Appellant’s Specification stating that a dual contact path allows tracing
“without a path” (id.), we are not convinced that Appellant had possession of
tracing without a path at the time of filing.
Maze Increases in Difficulty
Regarding claim 75, the Examiner finds that the Specification does
not set forth which structural element would enable the maze to “‘increase in
difficulty as the user approaches the end of the maze.’” Ans. 3. Appellant
argues that “the length and the design of the maze may make it a maze
increase in difficulty as the user traces from the beginning to the end, as
fully described in [the] specification.” Reply Br. 4. Regarding difficulty,
however, we are unable to find any description in the Specification of
increasing maze difficulty aside from the statement in paragraph [0034] that
mazes “may get increasingly difficult,” which fails to explain how difficulty
is increased. We therefore are not persuaded by Appellant’s argument.

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Several Beginning and Ending Points
The Examiner finds that claim 78’s recitation of “several beginning
and ending points that provide additional challenge” was not described in the
Specification to convey that Appellant had possession of the claimed
invention. Ans. 2. Appellant does not argue this point.
Mixed Textures Surrounding the Maze
The Examiner finds that claim 78’s recitation of beginning and ending
points allowing the “‘user a method to enter and exit the maze multiple
times to trace protruding mixed textures surrounding the maze and
outside the perimeter of the maze’” was not described in the Specification
to convey that Appellant had possession of the claimed invention. Ans. 2.
Appellant argues that “‘mixed textures surrounding the maze’ refers
to the shape of textures: one or more shapes of tetrahedrons, squares,
triangles, teeth, rounded protrusions and geometric shapes to form the dual
contact path for user to trace.” Reply Br. 5 (emphasis omitted). While the
Specification’s ¶ 17 brief description of Figure 8 mentions “multiple textures
of sensory points [being] mixed on a single brainpath board,” and ¶ 46
mentions “a combination of textures in the tactile paths 810 to provide
varied stimulation,” this disclosure implies that the mixed textures are along
the path rather than outside of a maze perimeter, and does not explain how
tracing would occur outside of the maze (i.e., the path). We are therefore
not persuaded by Appellant’s argument.

Intermittent Dual Contact Path
Regarding claim 79, the Examiner finds that “the phrase ‘the fingertip
touches both continuous contact points in both parallel lines’ is unclear
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since it appears to contradict to ‘a plurality of recessed contact points
arranged in a pattern of two parallel lines of contact points forming a first
intermittent dual contact path’ recited earlier in the claim.” Ans. 3-4.
Appellant argues that there is no contradiction “because the board []
having a plurality of protruding contact points arranged in a mixed textured
pattern of contact points forming a second dual contact of intermittent paths
on the board.” Reply Br. 5 (emphasis omitted). Appellant fails to explain
how an intermittent path can allow a fingertip to touch “‘both continuous
contact points in both parallel lines.’” Id. (emphasis omitted).
We have considered all of Appellant’s arguments set forth on pages
8–11 of the Appeal Brief and pages 2–6 of the Reply Brief, and are not
persuaded that the Examiner erred. For the reasons set forth above, we
sustain the rejection of claims 73–75 and 77–79 under 35 U.S.C. § 112, first
paragraph.
Rejection of Claims 73, 75, and 77–79 under 35 U.S.C. § 112, ¶ 2
In response to the indefiniteness rejection, Appellant argues that she
had possession of the claimed invention. App. Br. 9–10, Reply Br. 2–6.
Possession of the invention is relevant to the first ¶ of § 112, and not to the
second ¶ of § 112. Appellant also argues regarding definiteness for the first
time on pages 3–4 of the Reply Brief. Even if considered timely, we are not
persuaded by the arguments set forth therein.3

3 Appellants’ references to the Amendment filed April 8, 2013 (Reply Br. 5-
6) are not persuasive because the Amendment (filed April 6, 2013) was not
entered. See Advisory Action dated April 29, 2013.
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Rejection of Claims 66–72 and 76 under 35 U.S.C. § 102(e)
Claims 66–72
Appellant argues claims 66–72 as a group. App. Br. 11. We select
claim 66 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims
67–72 stand or fall with claim 66.
Appellant argues that Antoine does not teach “dual contact points,
does not have plastic molded exterior, does not have recessed contact points,
does not have teeth, can only be traced with one finger.” App. Br. 12.
Claim 66 recites dual contact paths and dual contact portions, and the
supporting structure comprising plastic, but does not disclose recessed
contact points (although claim 68 recites plural recessed portions forming a
recessed path) or teeth (although claims 67 recites teeth as a protrusion
shape option), and does not require tracing with more than one finger (a
reference that allows tracing with one fingertip meets the claim limitation of
“one or more fingertips”). The Examiner finds that Antoine teaches both
dual contact paths and a supporting structure comprising plastic. We find no
error in this finding.
Appellant argues that Antoine’s scrubbing device is a cylindrical
rather than flat, spherical, or box-shaped, and is covered with flexible rubber
that eliminates/minimizes sharp textures to stimulate the fingertips. Reply
Br. 6. Claim 66 recites the supporting structure having at least one of
“generally flat shape, a generally spherical shape, a box shape, and a
cylindrical shape,” which is met by Antoine’s teaching of a cylindrical
shape.
Appellant then argues that Antoine’s device is hand held, and holding
with one hand would prevent a user from tracing with all ten fingers. Id.
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Claim 66, however does not recite tracing with all ten fingers, but rather
recite tracing with “one or more fingertips.”
Appellant also argues that Antoine has a single texture rather than
dual contact textures. Reply Br. 6-7. Claim 66, although reciting various
texture shape options, does not recite dual contact textures, and is met by
protrusions having a single shape.
Appellant then argues that combining Antoine with the claimed
invention “makes Antoine incapable of performing [its] function of applying
soap to the body of the user.” App. Br. 12. This argument does not apprise
us of any error in the pending anticipation rejection.
Similarly, Appellant argues that “it is improper for an Examiner to use
knowledge only gleaned from Applicant’s application as a motivation for a
combination of cited art under 35 U.S.C. § 103. Further, combining Antoine
back scrubber combined with claimed invention is not obvious and lacks
reasonable success in doing so.” App. Br. 13. This argument regarding an
obviousness rejection under 35 U.S.C. § 103 is improperly made in response
to an anticipation rejection under 35 U.S.C. § 102(e).
Claim 76
Claim 76 recites that “the textures of the dual contact portions are
etched, carved, or molded into the surface of the supporting device.” The
Examiner finds that claim 76 is a product-by-process claim and thus is
limited to the product formed, and that “Antoine’s product would be the
same or similar as that claimed.” Ans. 5.
Appellant does not address the Examiner’s determination that claim
76 is a product-by-process claim. Instead, Appellant argues that because
Antoine’s “surface is rubber and claimed invention surface is rigid molded
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plastic, the two are not constructed of the same material, thereby making the
products different,” and that Antoine’s rubber coating is “appropriate for a
scrubber to apply soap, but not . . . tracing sharp edged textured contact
points to reorganize the brain of the user. Using the scrubber with the rubber
coating, the only surface that comes in contact with the user's fingers is
flexible rubber [not] rigid molded plastic.” App. Br. 14 see also Ans. 5.
However, only the supporting structure is recited to be plastic, not the dual
contact portion, and we are therefore not persuaded by this argument.
We have considered all of Appellant’s arguments set forth on pages
11-16 of the Appeal Brief and pages 6–8 of the Reply Brief, and are not
persuaded that the Examiner erred. For at least the reasons set forth above,
we sustain the rejection of claims 66–72 and 76 under 35 U.S.C. § 102(e) as
anticipated by Antoine.
Rejection of Claims 66–71 and 73–78 under 35 U.S.C. § 103(a)
Independent Claim 66
Appellant argues that the Examiner erred in finding that a user of
Edwards’ device can use one or more fingers to trace, because Edwards’
device has a single row of bumps for each letter, which can be traced in one
direction by following the arrows. App. Br. 16. As stated above, claim 66’s
recitation of allowing a user to trace with “one or more fingertips” is met by
a reference (here, Edwards) that allows a user to trace with a single fingertip
and Appellant’s arguments do not persuade us or error in that finding of the
Examiner.
Appellant also argues that, although the Examiner provides references
from Edwards’ disclosure and drawings, none of the cited disclosures is
included in Edwards’ claims. Id. at 17. A prior art reference, however, is
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not limited to the teachings of its claims and we therefore are not persuaded
by Appellant’s argument. In re Van Geuns, 988 F.2d 1181, (Fed. Cir. 1993)
deals with claim interpretation (of claims undergoing examination) rather
than the scope of prior art teaching.
Dependent Claims 67-71 and 73
Appellant argues claims 67–71 and 73 as a group. App. Br. 17. We
select claim 67 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claims 68–71 stand or fall with claim 67.
Claim 73 recites textured patterns in and around the paths for a user to
trace repeatedly “without a path to follow.” Because we determine that this
language in claim 73 renders it indefinite, we pro forma reverse the rejection
of claim 73 as an analysis would be based on a speculative interpretation of
claim 73. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele,
305 F.2d 859, 862-63 (CCPA 1962) (determinations as to obviousness
cannot be made for indefinite claims).
Claim 67 recites various attributes of the protrusions, the recessed
portions, and the supporting structure. Appellant again appears to be
arguing that Edwards’ claims do not teach the findings of the Examiner.
App. Br. 17. As stated above, a prior art reference is not limited to the
teachings of its claims and we therefore are not persuaded by Appellants’
argument.
Appellant also argues that the “Examiner has provided no reasoning
why the subject matter would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” App. Br. 17. The Examiner concluded that
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it would have been obvious to one having ordinary skill in the
art at the time the invention was made to select a lightweight
plastic material to make the page of Edward's device, for the
purpose of providing a durable yet light portable device that
would be easier to clean and maintain and would last longer
through everyday use, since it has been held to be within the
general skill of a worker in the art to select a known material on
the basis of its suitability for the intended use as a matter of
obvious design choice.
Ans. 6. Appellant does not refute this reasoning provided by the Examiner.
Appellant then argues certain standards for anticipation that are not
applicable to this obviousness rejection. Further, according to Appellant,
Edwards’ “[r]ecessed portions between protrusions are not in the single row
of bumps traced by user” and the “[u]ser would have to leave tracing path to
access these ‘supposed’ recessions between bumps and lose track of the next
contact point.” App. Br. 18. Appellant explains that “[w]hen contact points
are intermittent, spacing must be small enough that the user does not lose
track of the next contact point.” Id. The claims, however, do not recite that
the recessed portions between protrusions are in the single row of bumps, or
that the spacing must be small enough that the user does not lose track of the
next contact point. We therefore are not persuaded by this argument.
Appellant also argues that:
Portion 10 in fig 6 is not a smooth texture but rather, it is a
smooth surface of plastic with no texture. Textures in claimed
invention refer to fig 8 textures of sensory contact points 810
provide varied stimulation. Smooth surface provides no
stimulation and is not a texture in terms of claimed invention
[0025] definitions.
App. Br. 18. We see no recitation in Appellants’ claims of a “smooth
texture” and we are therefore not persuaded by this argument.
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Dependent Claims 74 and 75
Claim 73 recites textured patterns in and around the paths for a user to
trace repeatedly “without a path to follow.” As stated above, this language
in claim 73 renders it indefinite. Claims 74 and 75 depend from claim 73
and therefore are indefinite for the same reason. We therefore pro forma
reverse the rejection of claims 74 and 75 as an analysis would be based on a
speculative interpretation of claim 73. See In re Wilson, 424 F.2d at 1385;
In re Steele, 305 F.2d at 862–63 (determinations as to obviousness cannot be
made for indefinite claims).
Dependent Claims 76 and 77
Claim 76 recites that “the textures of the dual contact portions are
etched, carved, or molded into the surface of the supporting device.” The
Examiner finds that claim 76 is a product-by-process claim and thus is
limited to the product formed, and that “Antoine’s product would be the
same or similar as that claimed.” Appellant does not argue that claim 76 is
not a product-by-process claim. Appellant instead argues that Edwards’
“product is not the same as claimed invention because Edwards does not
have dual contact edges as taught in claimed invention and is incapable of
dual contact with each side of the users finger while tracing.” App. Br. 11
(emphasis omitted). Claim 76 (and claim 66 from which it depends) does
not recite “dual contact with each side of the finger” and we are therefore
not persuaded by this argument. Id.
Appellant also argues that Edwards’ sheeting plastic is not the same as
the “claimed invention’s 3-d molded plastic.” App. Br. 11. This argument
is not commensurate with the scope of claim 67, which does not recite such
a feature.
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Claim 77 recites the supporting device comprising textures protruding
from the surface of the device “without a path.” Because we determine that
this language in claim 77 renders it indefinite, we pro forma reverse the
rejection of claim 77 as an analysis would be based on a speculative
interpretation of claim 77. See In re Wilson, 424 F.2d at 1385; In re Steele,
305 F.2d at 862–63 (determinations as to obviousness cannot be made for
indefinite claims).
Independent Claim 78
Claim 78 recites contact points etched on a board surface “without a
path to follow.” Because we determine that this language in claim 78
renders it indefinite, we pro forma reverse the rejection of claim 78 as an
analysis would be based on a speculative interpretation of claim 78. See In
re Wilson, 424 F.2d at 1385; In re Steele, 305 F.2d at 862–63
(determinations as to obviousness cannot be made for indefinite claims).
We have considered all of Appellant’s arguments set forth on pages
16–22 of the Appeal Brief and pages 8–14 of the Reply Brief, and are not
persuaded that the Examiner erred. For at least the reasons set forth above,
we sustain the rejection of claims 66–71, 76, and 77 under 35 U.S.C. §
103(a) as unpatentable over Edwards.
Rejection of Claim 79 under 35 U.S.C. § 103(a)
The Examiner finds that:
Antoine is silent regarding the distance between two parallel
lines being about 1/8 - 3/8”. However, since Antoine already
teaches that the device is a hand held device (see [0012])
having general small dimensions that would be within the
claimed range and configured to accommodate a user's hand, it
would have been obvious to one having ordinary skill in the art
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at the time the invention was made to select the distance
between the two parallel lines to be about 1/8 - 3/8”, for the
purpose of accommodating various areas of the user's skin for
applying a desirable amount of soap to the skin of the selected
area, and also since it has been held that where the general
conditions of a claim are disclosed in the prior art, discovering
the optimum or workable ranges involves only routine skill in
the art.
Ans. 11–12.
We do not agree with the Examiner’s conclusion that it would have
been obvious to select a line spacing of 1/8” to 3/8” to apply a desirable
amount of soap. Nothing in Antoine suggests that the spacing of its lines
controls an amount of soap applied to a user’s skin, nor does Antoine discuss
any method for optimizing the spacing of its lines. We therefore do not
sustain the rejection of claim 79 as unpatentable of Antoine.
DECISION
We AFFIRM the rejection of claims 73–75 and 77–79 under 35
U.S.C. § 112, first paragraph.
We AFFIRM the rejection of claims 73, 75 and 77–79 under 35
U.S.C. § 112, second paragraph.
We AFFIRM the rejection of claims 66–72 and 76 under 35 U.S.C.
§ 102(e) as anticipated by Antoine.
We AFFIRM the rejection of claims 66–71 and 76 under 35 U.S.C.
§ 103(a) as unpatentable over Edwards.
We REVERSE the rejection of claims 73–75, 77, and 78 under 35
U.S.C. § 103(a) as unpatentable over Edwards.
We REVERSE the rejection of claim 79 under 35 U.S.C. § 103(a) as
unpatentable over Antoine.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rvb