Ex Parte Duesterhoft et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201713770226 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 13/770,226 02/19/2013 Paul Duesterhoft 0212-002-002-000000 6591 44765 7590 03/02/2017 INTELLECTUAL VENTURES - ISF ATTN: DOCKETING, ISF 3150- 139th Ave SE Bldg. 4 Bellevue, WA 98005 EXAMINER MERKOULOVA, OLGA VLADIMIROVNA ART UNIT PAPER NUMBER 2692 NOTIFICATION DATE DELIVERY MODE 03/02/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ISFDocketInbox@intven.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL DUESTERHOLFT, RODERICK A. HYDE, JORDIN T. RARE, STEPHEN L. MALASKA, ROBERT C. PETROSKI, and LOWELL L. WOOD, JR. Appeal 2016-006372 Application 13/770,226 Technology Center 2600 Before THU A. DANG, STEPHEN C. SIU, and MATTHEW J. McNEILL, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-3, 5, 6, 8-12, 15-17, 20, 21, 27-35, 37, 38, 41-53, 55, 56, and 58—61. Claims 4, 7, 13, 14, 18, 19, 22—26, 36, 39, 40, 54, and 57 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. A. INVENTION According to Appellants, the invention relates to “a computing device” which includes “a touch-sensitive screen configured [to] accept an Appeal 2016-006372 Application 13/770,226 input from a hand of a person based upon a touch contact,” and “a cleanliness sensor configured to detect an indicator of a pathogen present on the hand of the person” (Spec. 110). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A computing device comprising: a touch-sensitive screen configured to accept an input from a hand of a person based upon a touch contact; a cleanliness sensor configured to detect an indicator of a pathogen present on the hand of the person contacting the touch-sensitive screen or on a hand of the person contacting another surface of the computing device; and a cleanliness notification circuit configured to output a signal responsive to the detected indicator of a pathogen. C. REJECTIONS 1. Claims 1-3, 5, 6, 8-12, 15, 16, 31-35, 37, 38, 41-53, 55, 56, and 58—61 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jobs et al. (US 2008/0174570 Al; pub. July 24, 2008), and Dmitri Ivnitski et al. {Biosensors for Detection of Pathogenic Bacteria, Biosensors & Bioelectronics 14, 599—624 (1999)). 2. Claims 17, 20, 21, and 27—30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jobs, Ivnitski, and Panopoulos (US 2004/0220538 Al; pub. Nov. 4, 2004). 3. Claims 1-3, 5, 6, 8-12, 15-17, 20, 21, 27-35 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1—6, 11, 12, 16, 18—20, 25, 27—30, 35, 38— 40, 44, 47, 52-54, 61, 62, 71, 72. 75, 79-81, 83, 85-88, 90, 93, 94 and 98- 100 of copending Application No. 13/770,149. Appellants contend “it will 2 Appeal 2016-006372 Application 13/770,226 file an appropriate terminal disclaimer in one of this application and the ‘149 application, if both cases are found to be allowable and such a rejection is made in one of them” (App. Br. 44). As Appellants do not argue that the rejection is in error, we summarily affirm the rejection of claims 1—3, 5, 6, 8—12, 15—17, 20, 21, 27—35 on the ground of double patenting over the specified claims of copending Application No. 13/770,149.1 II. ISSUE The principal issue before us is whether the Examiner erred in finding that the combination of Jobs and Ivnitski teaches or suggests a “computing device” comprising a “touch-sensitive screen” and a “cleanliness sensor” configured to “detect an indicator of a pathogen present on the hand of the person contacting the touch-sensitive screen” (claim 1). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Jobs 1. Jobs discloses detecting finger contacts with a touch screen display (Abst.), wherein Figure 2 is reproduced below: 1 In the Answer, the Examiner withdraws the rejection of claims 1—3, 5, 6, 8—12, 15—17, 20, 21, 27—30 under 35 U.S.C. § 112, second paragraph (Ans. 3). 3 Appeal 2016-006372 Application 13/770,226 Figure 2 discloses a portable multifunction device 100 having a touch screen 112 (| 165). One or more optical sensors 164 (| 112) and one or more proximity sensors 166 (1113) may be included. Ivnitski 2. Ivnitski discloses biosensors for detection of pathogenic bacteria in a variety of fields (e.g., clinical diagnostic, food analysis and environmental monitoring) (Abst.). Ivnitski recognizes that an average person carries more than 150 kinds of bacteria which exist both inside and outside of the body, and thus expresses a need for rapid bacterial detection since “the presence of a single pathogenic organism in the body or food may be an infectious dose” (Sect. 1.1. Bacteria and microbial diseases). 4 Appeal 2016-006372 Application 13/770,226 IV. ANALYSIS 35 U.S.C. § 103(a) As for independent claim 1, Appellants contend that “Ivnitski and Jobs are not properly combinable” (App. Br. 18) at least because “Ivnitski is not in the same field of endeavor and is not analogous to the instant claims” (id. at 27). In particular, Appellants contend “Ivnitski never mentions touch screens,” wherein “the Examiner did not make a showing that the pathogen detection techniques of Ivnitski (which are carried out in solution) are applicable to detecting pathogens on a hand” (id.). According to Appellants, none of the cited references “are configured to detect a pathogen ‘on the hand of a person,’ as recited in the claim” (id. at 28). We have considered all of Appellants’ arguments and evidence presented. However, we disagree with Appellants’ contentions regarding the Examiner’s rejections of the claims. We agree with the Examiner’s findings, and find no error with the Examiner’s combination of the references and the conclusion that the claims would have been obvious over the combined teachings. Although Appellants contend “Ivnitski never mentions touch screens” (id. at 27), and that none of the references are configured to detect a pathogen “on the hand of a person” (id. at 28), the test for obviousness is what the combined teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, we agree with the Examiner’s finding that Jobs discloses “a touch-sensitive screen configured to accept an input from a hand of a person based upon a touch contact” (Final Act. 10-11; FF 1). Thus, we agree with the Examiner’s reliance on Jobs for teaching and suggesting a “computing 5 Appeal 2016-006372 Application 13/770,226 device” comprising a “touch-sensitive screen” and a “sensor” configured to detect the “hand of the person contacting the touch-sensitive screen” (claim 1). The Examiner concedes that Jobs “does not specify that this sensor can be used as a cleanliness sensor” to detect a pathogen on the hand (Final Act. 11), however, the Examiner relies on Ivnitski for teaching and suggesting “optical sensors” that “can be used to detect pathogens on the skin of the person touching the device.” Id. In particular, Ivnitski discloses detection of pathogenic bacteria in a variety of fields, including detecting pathogenic bacteria both inside and outside of the body (FF 2). We agree with the Examiner that Ivnitski teaches a “cleanliness sensor” configured to “detect an indicator of a pathogen present” on a person. Id. Thus, we are unpersuaded that the Examiner erred in finding that the combination of Jobs and Ivnitski teaches and suggests detecting “pathogen present on the hand of the person contacting the touch-sensitive screen,” as recited in claim 1. Although Appellants contend “Ivnitski is not in the same field of endeavor and is not analogous to the instant claims” (App. Br. 27), the nonanalogous art test considers the threshold question whether a prior art reference is “too remote to be treated as prior art.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). A reference is analogous art to the claimed invention if: (1) “the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem)”; or (2) “the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)” (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). 6 Appeal 2016-006372 Application 13/770,226 Here, Ivnitski is directed to sensing the pathogen bacteria that an average person carries inside and outside of the body, since the presence of a single pathogenic organism in the body may be an infectious dose (FF 2). In particular, like Appellants’ invention, Ivnitski is related to sensing whether a pathogen is present on the person of interest (id.). Thus, we are unpersuaded that Ivnitski is not from the same field of endeavor as the claimed invention (pathogen detection) and is not reasonably pertinent to the problem faced by the inventor (detecting a pathogen on the person that may be infectious). See Bigio, 381 F.3d at 1325. That is, we are unpersuaded that Ivnitski is “too remote to be treated as prior art.” See Clay, 966 F.2d at 658 (quoting Sovish, 769 F.2d at 741). Here, we agree with the Examiner that “[i]t is clear to any person skilled in the art” that “to mount the cleanliness sensor described in Ivnitski et al on Jobs’ touch screen” would be “quite obvious” since “all elements are well known in the art and would not change in their respective functions” wherein “the proposed combination would have yield[ed] nothing more than predictable results” to the ordinarily skilled artisan (Ans. 5). We conclude that a person of ordinary skill in the art, upon reading Ivnitski’s teaching of detecting pathogen bacteria on the person to determine whether the person is infectious (FF 2), would have found it obvious to modify Jobs’s touch screen sensors to include a pathogen sensor. As the Supreme Court guides, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one” KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). When considering obviousness of a combination of known elements, the operative question is thus “whether the 7 Appeal 2016-006372 Application 13/770,226 improvement is more than the predictable use of prior art elements according to their established functions” (Id.). Here, Appellants have not provided any evidence that such modification to modify Jobs’ touch screen to include a pathogen sensor would have been “uniquely challenging or difficult for one of ordinary skill in the art” (Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), or would have yielded unexpected results. We agree with the Examiner that Appellants’ invention is simply a modification of familiar prior art teachings (as taught or suggested by the cited references) that would have realized a predictable result (KSR, 550 U.S. at 421). The skilled artisan is “a person of ordinary creativity, not an automaton.” Id. at 421. On this record, we find no error in the Examiner’s rejection of claim 1, and claims 2, 3, 5, 6, 9-12, 15, and 16 depending therefrom and not separately argued (App. Br. 28) over Jobs and Ivnitski. As to claim 8, Appellants add that “[n]one of the sensors... of Ivnitski discuss real-time detection of a pathogen” (App. Br. 28). However, as the Examiner points out, Ivnitski “on page 602, second column, line 15, clearly specifies that there are direct detection biosensors which are designed] to perform detection in real time” (Ans. 6—7). We adopt the Examiner’s findings, which we incorporate herein by reference. Appellants do not provide substantive arguments for claims 31—35, 37, 38, 41—53, 55, 56, and 58—61 separate from claims 1 and 8 (App. Br. 33— 34). Thus, we also affirm the rejection of claims 31—35, 37, 38, 41—53, 55, 56, and 58—61 over Jobs and Ivnitski. As for claims 17, 20, 21, and 27—30, Appellants similarly contend that Panopoulos is “nonanalogous to the claims” (App. Br. 33). However, as the 8 Appeal 2016-006372 Application 13/770,226 Examiner points out, “Panopoulos was used to show a computer device which allows detection of pathogen on the skin of a person using cleanliness sensors (53) . . (Ans. 6—7). We adopt the Examiner’s findings, which we incorporate herein by reference, and affirm the rejection of claims 17, 20, 21, and 27—30 over Jobs, Ivnitski, and Panopoulos. V. CONCLUSION AND DECISION We affirm the Examiner’s rejections of claims 1—3, 5, 6, 8—12, 15—17, 20, 21, 27-35, 37, 38, 41-53, 55, 56, and 58-61 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation