Ex Parte Gazdzinski

Patent Trial and Appeal Board

Mar 19, 2013

09817842 (P.T.A.B. Mar. 19, 2013)

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.
09/817,842 03/26/2001 INV001Robert F. Gazdzinski RFG.006CP1 9452
27299 7590 03/19/2013
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
LEUBECKER, JOHN P
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
03/19/2013 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 ROBERT F. GAZDZINSKI
____________

Appeal 2010-000608
Application 09/817,842
Technology Center 3700
____________

Before JOHN C. KERINS, ANNETTE R. REIMERS and
BEVERLY M. BUNTING, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Robert F. Gazdzinski (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 15, 16, 35, 36, 38-41, 46
and 50-53, the only claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s invention is directed to an autonomously operating probe.
Independent claim 15, reproduced below, is representative of the claimed
subject matter:
15. A probe for autonomously operating within
the intestinal tract of a living human, comprising:

at least one sensor capable of collecting
information relating to said human;

a data processor; and

a communications device;

wherein said data processor and said
communications device are formed on a single
semi-conductive die.

THE REJECTIONS
The Examiner has rejected:
(i) claims 16, 36 and 53 under 35 U.S.C. § 112, second paragraph, as
being indefinite1;

1 A rejection of claim 39 on the same statutory basis was withdrawn by the
Examiner during the course of this appeal. Ans. 10.
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(ii) claims 15, 16, 35, 38-41, 46 and 50-53 under 35 U.S.C. § 102(b)
as being anticipated by Alfano (US 6,240,312 B1, issued May 29, 2001);
(iii) claims 35, 38, 39, 46 and 50 under 35 U.S.C. § 102(b) as being
anticipated by Brune (US 5,984,875, issued Nov. 16, 1999);
(iv) claims 15, 16, 40, 41 and 51-53 under 35 U.S.C. §103(a) as being
unpatentable over Brune in view of Banyai (US 6,128,220, issued Oct. 3,
2000); and
(v) claim 36 under 35 U.S.C. §103(a) as being unpatentable over
Brune in view of Souissi (US 5,671,247, issued Sep. 23, 1997).

ANALYSIS
Claim 15
Appellant presents no arguments directed to the rejection of claim 15
under 35 U.S.C. § 102(b) as anticipated by Alfano. The rejection is
summarily sustained.
While under other circumstances, we would not reach the rejection of
claim 15 as being unpatentable over Brune and Banyai, we do so in that it
affects our disposition as to claim 16, which depends from claim 15.
Appellant argues that Brune’s disclosure of a board-level electronics device
(circuit board) teaches away from use of the Brune device in a human being.
Appeal Br. 13. Appellant maintains that such a device would not fit in a
human intestinal tract, and that Brune contains no teaching of the same, and
further that Brune fails to disclose any miniaturization of the disclosed
device. Id.
These arguments do not apprise us of error in the Examiner’s position.
Appellant fails to address the Examiner’s proposed modification to Brune in
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view of the teachings of Banyai, and the conclusion that it would have been
obvious, in view of Banyai, to have provided the discrete components of
Brune on a single semi-conductive die. Ans. 7-8. Appellant has further not
shown where Brune criticizes, discredits or otherwise discourages the
Examiner’s proposed modification. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The
rejection of claim 15 as being unpatentable over Brune in view of Banyai is
sustained.
Claim 16
35 U.S.C. § 112, second paragraph
The Examiner maintains that “the term ‘extension’ is vague and
indefinite”, and intimates that possibly the term “extension instruction” was
intended. Ans. 5. The Examiner further notes that Appellant’s position is
that “extension” can refer to extension hardware as well as extension
instructions, and that “no single (or multiple, for that matter) extension
instruction or extension hardware is disclosed in the specification that is
attributable to satisfying ‘a target core speed criterion while minimizing gate
count’.” Ans. 9.
The latter position advanced by the Examiner is not in the nature of a
problem with indefiniteness of claim 16. Furthermore, we are persuaded by
Appellant’s arguments to the effect that persons of ordinary skill in the art
would understand what is meant by the claim term “extension.” Appeal Br.
5-6. The rejection of claim 16 under 35 U.S.C. §112, second paragraph, is
not sustained.

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35 U.S.C. § 102(b)--Alfano
The Examiner maintains that Alfano discloses a data processor having
a processor core that is optimized for power consumption, in that the Alfano
data processor “inherently includes a core which has a certain power
consumption which is ‘reduced’ compared to what it could be and thus
optimized.” Ans. 6. The Examiner elaborates on this position, noting that
“the processor selected and used by Alfano et al. is not the most inefficient
processor known to man with respect to power consumption” and that
“without a claimed reference or standard to validate the extent of the act of
optimizing, such language as it appears in claim 16, [is] merely an inherent
factor in the selection process (of a processor).” Ans. 11-12.
The common and ordinary meaning of “optimize” is “to make as
effective, perfect, or useful as possible.” (Dictionary.com Unabridged,
viewed at http://dictionary.reference.com/browse/optimize, last viewed on
March 8, 2013). The Examiner’s findings, even if accurate, that the Alfano
processor core has a “reduced” power consumption, and that it is not the
most inefficient processor known to man, do not establish, by a
preponderance of the evidence, that the processor core is “optimized” for
power consumption, per the ordinary meaning of “optimize”. The
Examiner’s statement that optimization is an inherent factor in the processor
selection process fails to take into account that a parameter or parameters
other than power consumption can be the focus of the “optimization” of the
processor core. The rejection of claim 16 as anticipated by Alfano is not
sustained.

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35 U.S.C. §103(a)--Brune/Banyai
Appellant does not separately argue for the patentability of claim 16
in the section of the Appeal Brief directed to the rejection of various claims
as being unpatentable over Brune in view of Banyai. Appeal Br. 13-15.
However, in presenting arguments directed to the rejection of claim 16 as
being anticipated by Alfano, Appellant makes passing reference to the Brune
and Banyai references, stating that “[n]either Brune nor Alfano nor Banyai
teach or suggest anything that Applicant can find regarding ‘power
consumption optimization.” Appeal Br. 7.
Brune notes that “[b]attery life of implanted monitors is severely
limited in prior art systems” and provides a controller 7 in the form of a
microprocessor U1 that is operated in a power down mode until woken up to
perform certain functions. Brune, col. 2, ll. 14-15; col. 7, ll. 14-16. As such,
Brune is concerned with power consumption optimization, and we find
Appellant’s argument unpersuasive. The rejection of claim 16 as being
unpatentable over Brune in view of Banyai is sustained.
Claim 35
Appellant does not present arguments directed to the rejection of
claim 35 as being anticipated by Brune. Accordingly, that rejection is
summarily sustained. We do not reach the rejection of claim 35 as being
anticipated by Alfano.
Claim 36
Claim 36 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. In particular, the Examiner maintains that the limitation
directed to a “spreading code” of a spread-spectrum transceiver being
“substantially unique from any other spreading code”, is such that, in the
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absence of a reference or standard, there is “no way that the Examiner can
determine if prior art spreading codes meet the limitation of being ‘unique
from any other spreading code’.” Ans. 10. Appellant presents an example
in which spreading codes would not be substantially unique, and argues that
the Examiner’s rejection is thus in error. Appeal Br. 6.
“The primary purpose of the definiteness requirement is to ensure that
the claims are written in such a way that they give notice to the public of the
extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine
whether or not they infringe. That determination requires a construction of
the claims according to the familiar canons of claim construction.” All
Dental Prodx, LLC v. Advantage Dental Prods., 309 F.3d 774, 779-80 (Fed.
Cir. 2002). To the same extent that the Examiner has noted that there is no
way to determine whether spreading codes employed in the prior art are
substantially unique from any other spreading code, interested members of
the public would have no way of determining whether a spreading code that
they might use is substantially unique from any other spreading code, and
thus would have no way to determine whether or not they would infringe
such a claim. The rejection under 35 U.S.C. § 112, second paragraph, is
sustained.
We do not reach the merits of the rejection of claim 36 under 35
U.S.C. § 103(a) over Brune in view of Souissi at this time. Before a proper
review of the rejection can be performed, the subject matter encompassed by
the claims on appeal must be reasonably understood without resort to
speculation. Since claim 36 fails to satisfy the requirements of the second
paragraph of 35 U.S.C. § 112 we are constrained to reverse, pro forma, the
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rejection under 35 U.S.C. § 103(a). See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of claim language.); see also In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious-the claim becomes indefinite.”).
Claim 38
Appellant does not present arguments directed to the rejection of
claim 38 as being anticipated by Brune. Accordingly, that rejection is
summarily sustained. We do not reach the rejection of claim 38 as being
anticipated by Alfano.
Claim 39
Appellant argues, with respect to the rejection of claim 39 as
anticipated by Alfano, that the Examiner erroneously failed to consider
structural limitations in the claim, and presents the language of claim 39 in
toto, with portions highlighted. Appeal Br. 11. The Examiner responds by
providing a further elaboration as to how the claim limitations are
interpreted and addressed. Ans. 17, citing to Ans. 12-13.
Appellant has not apprised us of error in the Examiner’s treatment of
claim 39. Appellant’s position, which merely repeats claim language and
states that the Examiner failed to consider certain limitations, is much like
that of the Appellant in In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011) (“we
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and naked assertion that the corresponding elements were not
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found in the prior art.”). The rejection of claim 39 as anticipated by Alfano
is sustained.
We do not reach the rejection of claim 39 as being anticipated by
Brune.
Claim 40
Appellant argues, with respect to the rejection of claim 40 as
anticipated by Alfano, that the Examiner erroneously failed to consider
structural limitations in the claim, and presents the language of claim 40 in
toto, with portions highlighted. Appeal Br. 11. The Examiner responds by
providing a further elaboration as to how the claim limitations are
interpreted and addressed. Ans. 17.
As was the case with respect to claim 39 above, Appellant has not
apprised us of error in the Examiner’s treatment of claim 40. Appellant’s
position, which merely repeats claim language and states that the Examiner
failed to consider certain limitations, is much like that of the Appellant in In
re Lovin. The rejection of claim 40 as anticipated by Alfano is sustained.
We do not reach the rejection of claim 40 as being unpatentable over
Brune in view of Banyai.
Claim 41
Claim 41 depends from claim 40, and Appellant does not present any
arguments for claim 41 that differ from those presented for claim 40, with
respect to the § 102(b) rejection over Alfano. That rejection is sustained for
the reasons given above with respect to claim 40.
We do not reach the rejection of claim 41 as being unpatentable over
Brune in view of Banyai.

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Claim 46
Appellant does not present arguments directed to the rejection of
claim 46 as being anticipated by Brune. Accordingly, that rejection is
summarily sustained. We do not reach the rejection of claim 46 as being
anticipated by Alfano.
Claim 50
Appellant does not present arguments directed to the rejection of
claim 50 as being anticipated by Brune. Accordingly, that rejection is
summarily sustained. We do not reach the rejection of claim 50 as being
anticipated by Alfano.
Claim 51
Claim 51 depends from claim 15. Like claim 15, Appellant does not
contest the rejection of claim 51 as anticipated by Alfano.2 The rejection is
thus summarily sustained. We do not reach the rejection of claim 51 as
being unpatentable over Brune in view of Banyai.
Claim 52
Claim 52 depends from claim 16. Appellant does not separately argue
for the patentability of claim 52 with respect to the § 103(a) rejection over
Brune and Banyai. As such, we sustain this rejection for the same reasons
presented for claim 16. We do not reach the rejection of claim 52 as
anticipated by Alfano for the reasons presented for claim 16.

2 Appellant attempts to group claims 51-53 with claim 50, and presents
arguments directed to the rejection of claim 50 as being anticipated by
Alfano. Ans. 10. Claims 51-53, however, do not depend from claim 50.
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Claim 53
Appellant does not present arguments directed to the rejection of
claim 53 under 35 U.S.C. §112, second paragraph, as being indefinite. Ans.
5-6. The rejection is thus summarily sustained.
Since claim 53 fails to satisfy the requirements of the second
paragraph of 35 U.S.C. § 112 we are constrained to reverse, pro forma, the
rejections of claim 53 under 35 U.S.C. §§ 102(b),103(a). In re Steele, 305
F.2d at 862; In re Wilson, 424 F.2d at 1385.

DECISION
At least one rejection of each claim on appeal has been affirmed,
which thus constitutes a general affirmance of the decision of the Examiner
as to each claim on appeal. 37 C.F.R. § 41.50(a)(1). The decision of the
Examiner to reject claims 15, 16, 35, 36, 38-41, 46 and 50-53 is affirmed.
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

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