Ex Parte Ferren et al

Patent Trial and Appeal Board

Feb 2, 2016

12930700 (P.T.A.B. Feb. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/930,700 01/13/2011
71484 7590 02/04/2016
IV - SUITER SW ANTZ PC LLO
14301 FNB PARKWAY, SUITE 220
OMAHA, NE 68154
FIRST NAMED INVENTOR
Bran Ferren
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.
IV 09-6-lF 7984
EXAMINER
ILUYOMADE, IFEDA YOB
ART UNIT PAPER NUMBER
2695
NOTIFICATION DATE DELIVERY MODE
02/04/2016 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):
file@suiter.com
srs@suiter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRAN FERREN, EDWARD K.Y. JUNG, and
CLARENCET.TEGREENE
Appeal2014-001362
Application 12/930,700
Technology Center 2600
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1, 2, 8-13, 16, 17, 19, 21-23, and 30-33, which are all
claims pending. App. Br. 51-54. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2014-001362
Application 12/930,700
STATEMENT OF THE CASE
Introduction
Appellants' disclosure relates to "methods and systems for controlling
access to information stored on memory or data storage devices" in which
"fluid-mediated modification of information or access to information is
utilized." Abstract. Claims 1, 21, and 3 0 are independent. Claim 1 is
reproduced below for reference:
1. A limited use memory device comprising:
a substrate;
machine-readable data stored on said substrate; and
at least one centrifugally activatable switching
mechanism on said substrate, said switching mechanism
configured to produce modification of a feature of the memory
device.
The Examiner's Rejections
RI: Claims 1, 21-23, and 33 stand rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 3-8 of Ferren '615 (US 7,916,615 B2; Mar. 29, 2011). Final Act. 5. 1
R2: Claim 1 stands rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 1 of
Ferren '068 (US 7,668,068 B2; Feb. 23, 2010). Final Act. 10.
R3: Claim 1 stands rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 1 of
Ferren '073 (US 7,596,073 B2; Sept. 29, 2009). Final Act. 12.
1 Although the Final Action includes claim 24 in the nonstatutory
obviousness-type double patenting rejection, we note claim 24 is canceled.
See App. Br. 53. Thus, we treat the rejection of claim 24 as harmless error.
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Application 12/930,700
R4: Claims 1, 2, 8, 10-13, 31, and 32 stand rejected under 35
U.S.C. § 102(b) as anticipated by Rollhaus (US 6,011,772; Jan. 4, 2000).
Final Act 13-14.
R5: Claims 19, 21 and 30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hall (US 2004/0088479 Al; pub. May 6, 2004),
Rollhaus, and Larroche (US 2005/0195728 Al; Sept. 8, 2005). Final Act.
17, 19, 24.
R6: Claims 9, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rollhaus and Larroche. Final Act. 22.
R7: Claims 22, 23, and 33 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hall, Rollhaus, Larroche, and Linnartz (US
6,314,518 Bl; Nov. 6, 2001). Final Act. 26.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. Any other arguments Appellants
could have made but chose not to make in the briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). We adopt the Examiner's
findings and conclusions (see Final Act. 2-30; Ans. 2-32) as our own, and
we add the following primarily for emphasis.
Double Patenting
Regarding rejection R3, Appellants argue the Examiner erred because
the Examiner "failed to provide the record with explanation regarding the
differences" of claim 1 to the claim of Ferren '073, and additionally failed to
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Appeal 2014-001362
Application 12/930,700
provide reasons why claim 1 would have been an obvious variation. App.
Br. 49.
We are not persuaded the Examiner erred. We agree with the
Examiner that the recited "at least one centrifugally activatable switching
mechanism on said substrate" is obvious in view of the "rotation activatable
fluid release mechanism on said substrate" disclosed in claim 1 of Ferren
'073. See Figs. 26A, 26B. Accordingly, we sustain rejection R3.
With respect to the other pending nonstatutory obviousness-type
double patenting rejections, Appellants present no arguments. App. Br. 48-
50. Accordingly, we affirm the Examiner's nonstatutory obviousness-type
double patenting rejections of claims 1, 21-23, and 33.
Anticipation and Obviousness Rejections
Appellants argue, with respect to Claim 1, that the Examiner:
failed to provide the record with objectively-verifiable evidence
of how one of ordinary skill in the art would interpret any
feature of Rollhaus as teaching an equivalent to the recitation of
'at least one centrifugally activatable switching mechanism on
said substrate, said switching mechanism configured to produce
modification of a feature of the memory device.
App. Br. 13 (emphases in original).
Appellants' arguments are unpersuasive of error. We agree with the
Examiner's findings, as Rollhaus discloses a reservoir filled with a "reading-
inhibit agent" that is released upon rotation of the disc (see Rollhaus Fig.
13); we find this reservoir is tantamount to the recited "centrifugally
activatable switching mechanism" of claim 1. See Ans. 27-28 (citing
Rollhaus 10:63---67, 11:28-57). In contrast, Appellants have made
conclusory arguments regarding the failure of the Examiner's findings
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Application 12/930,700
without providing a meaningful analysis of the disputed claim terms or the
cited specific textual portions of Rollhaus upon which the Examiner relied in
the rejection. 2 Accordingly, we are not persuaded the Examiner erred in
finding Rollhaus anticipates independent claim 1, and dependent claims 13,
31, and 32, which depend therefrom and were not argued separately with
particularity.
Appellants provide similar arguments with respect to the "rotation
activatable switching mechanism" of claim 21 (see App. Br. 29--34) and the
"rotation activatable mechanism" of claim 30 (see App. Br. 35--42). We
similarly are not persuaded the Examiner erred in finding Rollhaus teaches
these limitations, at least for the reasons as discussed above with respect to
claim 1. Thus, we find the combination ofRollhaus and Larroche teaches or
suggests the limitations of independent claims 21 and 30.
We also do not find the Examiner erred in rejecting dependent claims
2, 8, 9--12, 16, 17, 19, 22, 23, and 33, for similar reasons as discussed above
for claims 1, 21, and 30. Particularly, Appellants' arguments essentially
repeat the claim limitations and the Examiner's statements, but otherwise do
not persuasively show error in the rejection. See 37 C.F.R. § 41.37(c)(l)(iv);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
2 We note Appellants also argue that an unrelated patent appeal Decision
reversed a rejection based on inherency; however, the rejection in the
present application does not rely on inherency. See App. Br. 15-16
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Application 12/930,700
DECISION
We affirm the Examiner's rejections of claims 1, 2, 8-13, 16, 17, 19,
21-23, and 30-33.
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
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