Ex Parte Hiniduma-LokugeDownload PDFPatent Trial and Appeal BoardNov 2, 201713231936 (P.T.A.B. Nov. 2, 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. 13/231,936 09/13/2011 Prasanga D. Hiniduma-Lokuge L1229.102.101 5747 25281 7590 11/06/2017 DICKE, BILLIG & CZAJA FIFTH STREET TOWERS 100 SOUTH FIFTH STREET, SUITE 2250 MINNEAPOLIS, MN 55402 EXAMINER WAGGENSPACK, ADAM J ART UNIT PAPER NUMBER 3782 NOTIFICATION DATE DELIVERY MODE 11/06/2017 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): USPTO.PATENTS @dbclaw.com dmorris@dbclaw.com DBCLAW-Docket@dbclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PRASANGA D. HINIDUMA-LOKUGE Appeal 2015-007705 Application 13/231,93 61 Technology Center 3700 Before STEFAN STAICOVICI, SUSAN L. C. MITCHELL, and SEAN P. O’HANLON, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Prasanga D. Hiniduma-Lokuge (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Action (dated Nov. 26, 2014, hereinafter “Final Act.”) rejecting claims 1, 3, 5—8, and 21—25.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 According to Appellant’s Appeal Brief (filed March 20, 2015, hereinafter “Br.”), the sole inventor, Prasanga D. Hiniduma-Lokuge, is the real party in interest. Br. 3. 2 Claims 2, 4, and 9—20 are canceled. Br. 14, 15 (Claims App.). Appeal 2015-007705 Application 13/231,936 SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention relates to “infant carriers” that “facilitate] skin- to-skin contact between the infant and mother.” Spec., para. 2. Claims 1 and 23 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. An apparatus to carry an infant against a chest of a person, the apparatus comprising: a central panel; a first side panel attached to the central panel, wherein the first side panel has a first aperture formed therein; a second side panel attached to the central panel, wherein the first side panel and the second side panel are attached to opposite edges of the central panel and wherein the second side panel has a second aperture formed therein; a first infant seat attached to the central panel, wherein the first infant seat is adapted to receive a portion of the infant; an infant leg receptacle attached to an inner surface of the central panel, wherein the infant leg receptacle is a partially enclosed region that is adapted to receive at least a portion of the infant’s legs and wherein the infant leg receptacle and the first infant seat are independently attached to the central panel; a first belt operably attached to the first side panel opposite the central panel; and a second belt operably attached to the second side panel opposite the central panel, wherein the first belt and the second belt allow the first side panel and the second side panel to be secured around a torso of the person. 2 Appeal 2015-007705 Application 13/231,936 REJECTIONS I. The Examiner rejected claims 1,3,8, and 21—25 under 35 U.S.C. § 103(a) as being unpatentable over Shatzkin et al. (US 5,946,725, issued Sept. 7, 1999, hereinafter “Shatzkin”) and Munro (US 2006/0080779 Al, pub. Apr. 20, 2006). II. The Examiner rejected claims 1,3,8, and 21—25 under 35 U.S.C. § 103(a) as being unpatentable over Shatzkin, Munro, and Hilton et al. (US 2006/0206978 Al, pub. Sept. 21, 2006, hereinafter “Hilton”). III. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Shatzkin, Munro, and Dunn et al. (US 5,454,498, issued Oct. 3, 1995, hereinafter “Dunn”) or Deacon (US Des. 275,812, issued Oct. 9, 1984). IV. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Shatzkin, Munro, Hilton, and Dunn or Deacon. V. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Shatzkin, Munro, and Norman (US 6,598,771 B2, issued July 29, 2003). VI. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Shatzkin, Munro, Hilton, and Norman. VII. The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable over Shatzkin, Munro, and Feldman, Jr. (US 6,182,874 Bl, issued Feb. 6, 2001, hereinafter “Feldman”). 3 Appeal 2015-007705 Application 13/231,936 VIII. The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable over Shatzkin, Munro, Hilton, and Feldman. Appellant presents additional evidence in the Declaration filed under 37 C.F.R. § 1.132 by the sole inventor, Prasanga D. Hiniduma-Fokuge, on October 17, 2014 (hereinafter “Fokuge Declaration”). ANAFYSIS Rejection I Appellant has not presented arguments for the patentability of claims 3, 8, and 21—25 apart from claim 1. See Br. 7—11. Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 3, 8, and 21—25 standing or falling with claim 1. The Examiner finds that Shatzkin discloses most of the limitations of independent claim 1, but fails to disclose “first and second belts as claimed or an infant leg receptacle as claimed.” Final Act. 2—3. Nonetheless, the Examiner finds that Munro discloses, inter alia, infant supporting device including central panel 14, 16, infant seat 22 having side openings to permit the infant’s legs to go through, and infant leg receptacle 20 attached to central panel 14, 16. Id. at 3. The Examiner further “takes official notice that first and second belts are an art known fastening mechanism/garment closure mechanism.” Id. Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art to add an infant leg receptacle (20) attached to an inner surface of the central panel, in order to keep an infant’s legs warm, to better secure the infant in position, and/or as a mere substitution 4 Appeal 2015-007705 Application 13/231,936 of one infant supporting structure (i.e. the original structure) for another (i.e. that taught by Munro). Id. at 5. The Examiner further determines that it would have been obvious to the same skilled artisan to separate the back panel (16) into two parts and add a belt to each part in order to allow separation of the panel in order to allow a user to more easily remove the garment and/or to allow removal with less disturbance of an infant in the infant seat, and/or as doing so constitutes merely making separable which does not patentably distinguish over the prior art (MPEP [§] 2144.04(V)(C)) (i.e. it merely makes the back panel separable into two parts and allows for the two parts to reattach as desired). Id. Appellant argues that because Shatzkin’s garment permits Kangaroo Care, i.e. by providing skin-to-skin contact between caregiver and infant, whereas Munro’s infant support device does not, a skilled artisan “would not have been inspired to modify the Shatzkin device to include the Munro leg receptacle because the Munro leg receptacle would significantly reduce the amount of skin-to-skin contact of the Shatzkin device.” Br. 8—9. According to Appellant, the purpose of Shatzkin’s garment is “to maximize the amount of. . . contact between the infant’s skin and the caregiver’s skin” because such contact “help[s] parents create a familial bond as early as possible by providing a safe, cozy, comfortable environment,” and maintains the infant “in a comfortable sleeping position and the caregiver’s hands do not need to be used to support the infant.” Id. In contrast, Appellant notes that pouch 20 of Munro’s infant supporting device “enhances the ability of the 5 Appeal 2015-007705 Application 13/231,936 caregiver to maintain the infant at an appropriate body temperature while the infant is nesting in a space defined by the arm and upper torso of the person cradling the infant.” Id. at 8. We are not persuaded by Appellant’s arguments for the following reasons. Although we appreciate that modifying Shatzkin’s garment to include pouch 20 of Munro may reduce the amount of skin-to-skin contact between caregiver and infant, we find that Shatzkin’s garment, as modified by Munro, will nonetheless, result in a Kangaroo Care garment, albeit with less amount of skin-to-skin contact between caregiver and infant. The Examiner is correct that the modification of Shatzkin’s garment to include Munro’s pouch 20 “leaves the baby’s upper torso free for skin to skin contact,” and, thus, “is still suitable for the [Kangaroo Care] purpose of Shatzkin.” Examiner’s Answer 3^4 (dated June 15, 2015, hereinafter “Ans.”). Furthermore, we note that the reason to modify the reference may often prompt a person of ordinary skill in the art to do what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by an Applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). As such, if there are tradeoffs involved regarding features, costs, manufacturability, or the like, such things do not necessarily prevent the proposed combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). “The fact that the motivating benefit comes at the expense of another benefit. . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be 6 Appeal 2015-007705 Application 13/231,936 weighed against one another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Here, although modifying Shatzkin’s garment to include the pouch 20 of Munro may reduce the amount of skin- to-skin contact between caregiver and infant, nonetheless, the modification provides other benefits. For example, we agree with the Examiner that such benefits include “hold[ing] the infant’s legs in a suitable position, preventing] the legs from snagging on a wearer’s pants or undergarments, helping] to keep the infant’s legs warm, and providing] additional cushioning for the child.” Ans. 4. Appellant has not persuasively shown error in the Examiner’s findings and reasoning. Appellant further argues that the devices of Shatzkin and Munro have different purposes because Shatzkin’s garment is attached to a caregiver by providing skin-to-skin contact between the caregiver and an infant, whereas Munro’s infant cradling device is not attached to the caregiver. See Br. 8. We do not agree with Appellant’s position because nonobviousness cannot be shown by attacking the disclosures of Shatzkin and Munro individually when the rejection as articulated by the Examiner is based on a combination of Shatzkin and Munro. See Ans. 2—3; see also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We further agree with the Examiner that the determination of obviousness is not based on impermissible hindsight reconstruction (see Br. 6) because the Examiner states a reasoning with rational underpinnings for the modification, namely, “to keep an infant’s legs warm, to better secure the infant in position” (see Final Act. 5); see Ans. 2; see also In re Cree, 818 F.3d 694, 702 n.3 (Fed. Cir. 2016). As the Examiner’s modification leads to a predictable result, the modification is well within the skill of one having 7 Appeal 2015-007705 Application 13/231,936 ordinary skill in this art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Furthermore, Appellant’s assertion that Munro’s infant cradling device would produce swaddling, which is discouraged by Shatzkin’s disclosure because swaddling prevents the benefits of skin-to-skin contact (see Br. 8), is unsupported attorney argument and cannot take the place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We agree with the Examiner that “[a] swaddled infant is almost completely encased in swaddling, while an infant in the Munro device is only encased below the legs and with a backing member.” Ans. 4. Appellant has not persuasively shown error in the Examiner’s findings and reasoning. The Lokuge Declaration We recognize that evidence of secondary considerations, such as that presented by Appellant, must be considered in route to a determination of obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we consider anew the issue of obviousness under 35 U.S.C. § 103, carefully evaluating and weighing both the evidence relied upon by the Examiner and the objective evidence of nonobviousness provided by Appellant. Appellant alleges others have praised the claimed invention. See Br. 9, 11. In support of this contention, Appellant relies on a letter from Leith Greenslade of the Millennium Development Goal Health Alliance in the Office of the United Nations Special Envoy for the Financing the Millennium Development Goals (hereinafter “Greenslade Letter”). See id. at 9, 10; see also Lokuge Declaration, paras. 8,9, 11. Appellant also relies on a report from PATH, an independent non-profit that assesses technologies 8 Appeal 2015-007705 Application 13/231,936 for the developing world, on Newborn Thermal Care Devices for Low- Resource Settings (hereinafter “PATH Report”). See Br. 9,11; see also Lokuge Declaration, para. 22. “For objective [evidence of secondary considerations] to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (quotation omitted). To establish a nexus, the “[e]vidence of secondary considerations must be reasonably commensurate with the scope of the claims.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Here, we agree with the Examiner that evidence provided is not commensurate with the scope of the claims such as to “establish a nexus between the [evidence and the] inventive feature of a pouch around the infant’s legs.” Ans. 6. Specifically, the Greenslade Letter states that the invention (described as IncuPouch™) provides Kangaroo Care, constitutes a thermal device that provides standalone care separate from the mother, is designed to stimulate breastfeeding, is used in homes or facilities, and has the potential to be used as a transporter of sick infants from home to a facility. See Lokuge Declaration, Exhibit 1, Greenslade Letter; see also Lokuge Declaration, paras. 10, 14. The Greenslade Letter further references the PATH report and states that the invention was rated “best in the category of ‘transport incubator’” and furthermore, that “[e]arly field trials by Save the Children in Vietnam were encouraging with mothers and family members praising the mobility, comfort, convenience and ease of use of the device.” See Lokuge Declaration, Exhibit 1, Greenslade Letter; Lokuge Declaration, Exhibit 2, PATH Report, Scenario B (p. 12); see also Lokuge Declaration, paras. 6, 7, 9 Appeal 2015-007705 Application 13/231,936 21, 22. As such, the Examiner is correct that at most, the Greenslade Letter, sets forth certain advantages or benefits of the IncuPouch™ invention, but “does not provide evidence that the claimed feature (specifically the infant leg pouch as claimed) provides a nonobvious improvement over the prior art.” Ans. 7. For example, the features of “mobility, comfort, convenience and ease of use,” noted above, could just as well be the result of providing first and second belts as a fastening mechanism. The Examiner is also correct in that the PATH Report likewise does not discuss the particular feature of the infant leg pouch. Id. We also agree with the Examiner that it is not clear from the PATH report, and Appellant has not indicated, which features of the compared products were taken into consideration in order to reach the stated scores to rate it “best in the category of ‘transport incubator’”. Id. Appellant also alleges that that the claimed invention solves a long felt need of reducing infant deaths in lesser-developed countries. See Br. 9— 10; see also Lokuge Declaration, paras. 3,5. In order to establish long felt need, Appellant must establish that “such a ‘problem’ objectively existed, as distinguished from its acknowledged subjective existence in the minds of the inventors and their patent counsel.” In re Gershon, 372 F.2d 535, 538 (CCPA 1967). Appellant must also establish that others unsuccessfully attempted to solve the problem. See Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.32d 1376, 1382 (Fed. Cir. 1983); Scully Signal Co. v. Electronics Corp. of America, 570 F.2d 355, 361 (1st Cir. 1977) (“[T]he questions ‘how long did the need exist’ and ‘how many tried to find the way’, appear side by side with the question of success.”). In this case, although the Lokuge Declaration states that the problem of infant 10 Appeal 2015-007705 Application 13/231,936 deaths in lesser-developed countries is well known, nonetheless, we agree with the Examiner that the Lokuge Declaration provides no evidence how long the problem existed nor that others unsuccessfully attempted to solve the problem. Ans. 7; see also Lokuge Declaration, paras. 3—5, 12. The Examiner is correct in that, although the Lokuge Declaration states there are few technologies available that support Kangaroo Care and currently available technologies maintain infants warmth by requiring 24-hour skin- to-skin contact or stand-alone baby warmers, the Lokuge Declaration provides no evidence of such technologies. Ans. 7—8; see also Lokuge Declaration, paras. 13, 14. With respect to Appellant’s argument that “Shatzkin does not teach or appreciate the challenges associated with periodically placing and removing the baby into the Shatzkin infant carrier garment” (Br. 10), we note that attorney argument cannot take the place of evidence in the record. Geisler, 116 L.3d at 1470 (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”); Br. 10; see also Lokuge Declaration, para. 15. Linally, we are not persuaded by Appellant’s arguments regarding the benefits of the invention, because such arguments are not related to the issue of nonobviousness. Br. 10-11; see also Lokuge Declaration, paras. 16—20. After reviewing all of the evidence before us, including the totality of Appellant’s evidence, it is our conclusion that, on balance, the evidence of obviousness discussed above outweighs the evidence of nonobviousness submitted by Appellant. Accordingly, we sustain the rejection under 11 Appeal 2015-007705 Application 13/231,936 35 U.S.C. § 103(a) of claim 1 as unpatentable over Shatzkin and Munro. Claims 3, 8, and 21—25 fall with claim 1. Rejections II—VIII Appellant relies on the same arguments discussed supra regarding Rejection I. See Br. 12—13. Therefore, for the same reasons as discussed above, we also sustain Rejections II—VIII. SUMMARY The Examiner’s decision to reject claims 1, 3, 5—8, and 21—25 under 35 U.S.C. § 103(a) 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)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation