Ex Parte Glenn et al

Patent Trial and Appeal Board

Oct 23, 2012

10684583 (P.T.A.B. Oct. 23, 2012)

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.
10/684,583 10/15/2003 Gregory M. Glenn ASAC-001 2329
28661 7590 10/23/2012
Lewis and Roca LLP
2440 W. El Camino Real, 6th Floor
Mountain View, CA 94040
EXAMINER
POPE, DARYL C
ART UNIT PAPER NUMBER
2685
MAIL DATE DELIVERY MODE
10/23/2012 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 GREGORY M. GLENN, DAMON SILVA, and
TIMOTHY HENRY
____________________

Appeal 2010-006558
Application 10/684,583
Technology Center 2600
____________________

Before JEAN R. HOMERE, LARRY J. HUME, and JOHN G. NEW,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006558
Application 10/684,583

2
STATEMENT OF THE CASE
1

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-5, 10, 13, 15, 21, 26-29, 35, and 36. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The Invention
Appellants invented an apparatus for monitoring conditions, more
particularly, “the present invention relates to the ability to monitor
environmental conditions at a site with increased reliability and accuracy as
well as the ability to access real-time data from a remote location.” (Spec. p.
1, ¶ [0001], “FIELD OF THE INVENTION”).
Exemplary Claim
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added to disputed limitations):
1. An apparatus for monitoring a remote site, the
apparatus comprising:
a sensor configured to:
receive a command to enable the sensor,
detect an environmental condition at the
remote site upon receipt of a command to enable
the sensor, and

1
Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed June 25,
2009); Reply Brief (“Reply Br.,” filed Nov. 5, 2009); Examiner’s Answer
(“Ans.,” mailed Sept. 22, 2009); Final Office Action (“FOA” mailed Mar. 4,
2009); and original Specification (“Spec.” filed Oct. 15, 2003).
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obtain raw data concerning the detected
environmental condition;
a memory device configured to store calibration
information;
a control board including a microprocessor and a
plurality of communication ports, one of the communication
ports providing a link to the remote sensor, the control board
configured to:
receive the raw data from a variety of types
of data collection devices, including the remote
sensor,
process the raw data based on at least the
calibration information stored in the memory
device,
place the processed data into at least one
packet,
transmit the at least one packet in a wireless
communication from the control board to a server,
and
wirelessly download updates to the stored
calibration information;
a battery configured to provide primary power to the
control board; and
a solar panel configured to recharge the battery.

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Application 10/684,583

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Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wilson
Kail, IV
Rogers
US 5,400,246
US 5,959,529
US 6,282,469 B1
Mar. 21, 1995
Sep. 28, 1999
Aug. 28, 2001
Lauber US 2004/0090950 A1 May 13, 2004

Rejection on Appeal
2

Claims 1-5, 10, 13, 15, 21, 26-29, and 35-36 stand rejected under 35
U.S.C. 103(a) as being unpatentable over Kail in view of Rogers, Wilson,
Lauber, and the Examiner’s taking of Official Notice. (Ans. 3).
Based upon Appellants’ arguments against the final rejection, we
select claim 1 to decide this appeal for all claims on appeal such that claims
2-5, 10, 13, 15, 21, 26-29, and 35-36 stand or fall together with independent
claim 1. (App. Br. 11-12; Reply Br. 2-6).

2
We note that the various statements of the rejection as set forth in each of
the Final Office Action (FOA 2), Appeal Brief (App. Br. 10), and Answer
(Ans.3) erroneously include claim 14, which has been previously canceled
and is not pending in this appeal, as confirmed by Appellant. (App. Br. 3).
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APPELLANTS’ CONTENTIONS
3

Appellants contend that the Examiner failed to identify “anything in
either Kail or Rogers that discloses the calibration information [and that
t]here is . . . no indication from the Examiner that Kail, or any other
reference, discloses the claimed ‘calibration.’” (App. Br. 12).
Appellants further contend that:
Rogers does not disclose a ‘control board’ that is ‘configured to
. . . process the raw data based on at least the calibration
information’ [and t]he addition of Wilson and Lauber does not
cure Kail’s and Rogers’ failure - individually or in any
combination - to disclose claimed ‘calibration’ [and a]s such,
each of the references (Kail, Rogers, Wilson, and Lauber)
further fail to disclose the claimed ‘memory device configured
to store calibration information,’ ‘download updates to stored
calibration information,’ ‘process the raw data based on at least
the calibration information,’ and ‘wirelessly download updates
to the stored calibration information.’
(App. Br. 12, emphasis in original).
Appellants go on in the Reply Brief to contend that, with respect to
the Examiner’s finding that Wilson teaches calibration of remotely
controlled sensors (citing to Ans. 11), “none of the three quoted sections of
Wilson mention anything regarding calibration.” (Reply Br. 2).

3
Appellants have erroneously included arguments directed to claim
language that appears to be irrelevant to the claims on appeal and citing
references unrelated to the present appeal in the “Conclusion and Requested
Relief” section of the Appeal Brief, all of which we have not considered in
reaching this Decision. (App. Br. 13). These arguments appear to be
directed to another application, and not the present appeal.
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Further in this regard, “Appellants disagree that the Examiner can find
a calibration function in functions that do not concern calibration [i]n
addition to the lack of calibration, the combined references also fail to teach
all the claimed elements pertaining to such calibration.” (Reply Br. 3-4).
Additionally, Appellants contend that “[w]hile any memory device
can store a variety of information, neither Kail nor Wilson (nor any other
cited reference, alone or in any combination) specifically teaches storage of
calibration information, or any of the other claimed elements related to
calibration.” (Reply Br. 5).
In addition, Appellants contend that “[s]ince Kail only teaches general
processing of raw data and Wilson actually only teaches converting analog
data, the Examiner seems to be arguing that references that teach processing
raw data and converting analog data must also therefore teach the processing
of raw data based on calibration information.” (Reply Br. 6).
Finally, Appellants contend that “[t]he mere processing of “raw” or
analog data does not teach (or imply or require) each and every claimed
elements [sic] pertaining to calibration information. . . a reference that
merely teaches conversion of analog data does not teach the processing of
raw data based on calibration information.” (Reply. Br. 6).
ISSUE
Did the Examiner err in finding that the combination of Kail, Rogers,
Wilson, Lauber, and the Examiner’s taking of Official Notice, teaches or
suggests all the claim limitations, particularly that the suggested
combination teaches or suggests “a memory device configured to store
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calibration information,” and “[a] control board configured to . . . process
the raw data based on at least the calibration information stored in the
memory device,” as recited in independent claim 1?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claim 1, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer (Ans. 3-13) in response to Appellants’ Arguments
(App. Br. 11-12; Reply Br. 2-6). However, we highlight and address
specific findings and arguments regarding claim 1 for emphasis as follows.
In particular, we concur with the Examiner’s finding that “Kail does
suggests use of a control board in the form of sensor interface unit (20),” and
that “[u]se of a control board including a microprocessor and serial
communication ports is well known in the art,” as evidenced by the art of
record, Rogers. (Ans. 4).
We further agree with the Examiner’s finding:
Kail teaches that the microprocessor (22) wirelessly downloads
instructions from the remote terminal (52) that alters its
programming (see: column 7, lines 60 et seq; column 8, lines 1-
28), and since the microprocessor would have been configured
to store the calibration information, as discussed above, the
examiner also deems that the claimed wirelessly download
updates to the stored calibration information would have also
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been met, upon incorporation of the sensors of Wilson into
Kail. . . .
Ans. 11-12.
We also agree with the Examiner’s finding:
that upon incorporation of different types of sensors into Kail,
such as those that produce raw data, then it would have been
obvious to one of ordinary skill in the art at the time the
invention was made that the microprocessor (22) of Kail would
have processed the raw data based on the calibration
information already stored in the memory (44) of the
microprocessor.
Ans. 12.
We find that it is well known by a person of ordinary skill in the art to
use calibration data to correct raw sensor data. In support of this finding, we
note that Wilson teaches calibration of temperature sensor data, for example,
see Wilson at col. 11, ll. 52-58; col. 13, ll. 44-50; col. 14, ll. 68; and col. 15,
line 1 et seq.
In addition, we note that the apparatus recited in claim 1 recites the
following five (5) elements: (1) a sensor, (2) a memory device, (3) a control
board, (4) a battery, and (5) a solar panel. In this regard, we find that the
Examiner has identified each of these positively recited elements in the
various references cited in the final rejection. (See Ans. 3-12). We agree
with the Examiner’s analysis.
Further in this regard, and although not relied upon to reach
agreement with the Examiner’s rejection and our ultimate decision in this
appeal, we point out that, if further prosecution of this application should
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ensue, the functional recitations in claim 1 of (1) “a sensor configured
to . . . ,” (2) “a memory device configured to . . . ,” (3) “[a] control board
configured to . . . ,” (4) “a battery configured to . . . ,” and (5) “a solar panel
configured to . . . ,” are statements of intended use, which indicates that the
elements recited are capable of carrying out their recited functions without
requiring, per se, that the functions are actually carried out.
4

Accordingly, since Appellants have not presented convincing
arguments or evidence that the Examiner erred in either the findings of fact
regarding the cited art or in the proffered claim construction, we sustain the
Examiner’s rejection of independent claim 1, as well as the rejection of
claims 2-5, 10, 13, 15, 21, 26-29, and 35-36 which fall with claim 1.
CONCLUSIONS
Appellants have not established that the Examiner erred with respect
to the unpatentability rejection of claims 1-5, 10, 13, 15, 21, 26-29, and 35-
36, under 35 U.S.C. § 103(a) over Kail in view of Rogers, Wilson, Lauber,
and the Examiner’s taking of Official Notice, and the rejection is sustained.

4
Our reviewing Court has held that a statement of intended use in an
apparatus claim cannot distinguish over a prior art apparatus that discloses
all the recited limitations and is capable of performing the recited function.
See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We also note
that “[a]n intended use or purpose usually will not limit the scope of the
claim because such statements usually do not more than define a context in
which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although
“[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel,
828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose
can appear elsewhere in a claim. Id.
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DECISION
The decision of the Examiner to reject claims 1-5, 10, 13, 15, 21, 26-
29, and 35-36 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)(1)(iv) (2011).
AFFIRMED

ELD