Ex Parte HansonDownload PDFPatent Trial and Appeal BoardMay 6, 201311465710 (P.T.A.B. May. 6, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID F. HANSON ____________ Appeal 2011-002449 Application 11/465,710 Technology Center 3600 ____________ Before LYNNE H. BROWNE, ANNETTE R. REIMERS and MITCHELL G. WEATHERLY, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002449 Application 11/465,710 2 STATEMENT OF THE CASE David F. Hanson (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 40-59 under 35 U.S.C. § 103(a) as unpatentable over Fumio Hara and Hiroshi Kobayashi, Real-time Facial Interaction between Human and 3D Face Robot Agent, IEEE International Workshop on Robot and Human Communication, 401-09 (1996) (hereinafter “Hara”) and J.-J. Brossy, Foam elastomer dressing in surgery, SA Medical Journal, 559-60 (1981) (hereinafter “Brossy”). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Claim 40, reproduced below, is illustrative of the subject matter on appeal. 40. A human emulation robot system, comprising: a mobile mechanical frame; an artificial skin mounted on the exterior of the mechanical frame, the artificial skin comprising discrete, microscopic sections of foamed and unfoamed elastomers; one or more actuators coupled to the mechanical frame and operable to manipulate the artificial skin; and a control system operable to control the manipulation of the artificial skin by the one or more actuators. App. Br. 9. Appeal 2011-002449 Application 11/465,710 3 OPINION Obviousness The Examiner finds that an un-cited quotation from Hara covers all the limitations with the exception of wheels/legs to [transport] the mechanical frame which [is] being considered [as] having no patentable weight. Therefore such features wheel/legs remain as [a] design choice (see entire documents). Clear evidence has been shown regarding the artificial skin of Hara et al., but the reference does not specifically teach foamed elastomers which [is] being considered as [a] known feature. Ans. 4. The Examiner further finds “Brossy, in [sic] the order [sic] hand make[s] the use [of] foam elastomer which [is] being considered a known feature that has a variety of use[s], that is to say from surgery/artificial skin to robot application (see pages 1-2, particularly the title).” Id. The Examiner then concludes it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify the robot type of Hara et al. with the foam elastomer of Brossy, because this modification would have increased the artificial skin of Hara et al. in order [to] pin point directly the material the skin has [been] made of, thereby improving the efficiency the [sic] and the reliability of the human emulation robot system. Ans. 5. Appellant argues “the Examiner has glaringly failed to even attempt to establish a prima facie case of obviousness.” App. Br. 4. We agree. Examination “shall be complete with respect . . . to the patentability of the invention as claimed.” 37 C.F.R. § 1.104(a)(1) (emphasis added). Appeal 2011-002449 Application 11/465,710 4 “When a reference is complex . . . , the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” 37 C.F.R. § 1.104(c)(2) (emphasis added). It is unclear from the record how the teachings and disclosures of the prior art references are being applied by the Examiner to reject the currently pending claims. Quotation of an unidentified portion of Hara that does not pertain to any of the claim limitations coupled with a citation to the entire reference, does not designate the particular part of the reference relied upon as nearly as practicable. “[T]he Board's primary role is to review adverse decisions of examiners including the findings and conclusions made by the examiner.” Ex parte Frye, 94 USPQ2d 1072, 1077 (BPAI 2010) (precedential). See also 37 C.F.R. § 41.50(a)(1) (“The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner”). Where, as in the instant case, the Examiner has provided a general discussion of the prior art without reference to elements disclosed in the prior art or to the limitations in the claims, the Examiner has failed to comply with Rules 1.104(a)(1) and (c)(2) and fails to establish a record for our review. Accordingly, the Examiner fails to make a prima facie case of obviousness. For these reasons, we reverse the Examiner’s rejection of claims 40- 59 under 35 U.S.C. § 103(a) as unpatentable over Hara and Brossy. Appeal 2011-002449 Application 11/465,710 5 DECISION The Examiner’s rejection of claims 40-59 is REVERSED. REVERSED hh Copy with citationCopy as parenthetical citation