Ex Parte Hurtis et al

Patent Trial and Appeal Board

Oct 25, 2017

11951074 (P.T.A.B. Oct. 25, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/951,074 12/05/2007 George M. Hurtis RPS920070246US1 (109) 7675
50594 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33487
EXAMINER
AMSDELL, DANA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE M. HURTIS,
BRIANT T. KREIFELS, and MANIVANNAN THAVASI
Appeal 2016-000021
Application 11/951,074
Technology Center 3600
Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the Decision (hereinafter “Dec.”),
entered April 28, 2017, in which we affirmed the Examiner’s rejection of
claims 1—20 under 35 U.S.C. § 103(a) as obvious over Lin and Bridgelall
and Lin, Bridgelall, and Gould.1 Request for Rehearing, filed June 28, 2017,
hereinafter “Req. Reh’g”. The Decision also affirmed the Examiner’s
rejection of claims 1—20 under 35 U.S.C. § 101, and the rejection of claims 7
and 20 under (pre-AIA) 35 U.S.C. § 112, second paragraph. See Dec. at 3,
1 The Request states that § 103 rejections of claims 1—6 and 8—19 were
affirmed in the Decision. Req. Reh’g 2. However, the § 103 rejections, and
the associated affirmance in the Decision, were to claims 1—20. See Dec. 3,
14; Non-Final Act. 10—19; Ans. 2. This correction is reflected herein.
Appeal 2016-000021
Application 11/951,074
14. Appellants do not request reconsideration of the affirmances under
§ 101 or§ 112, second paragraph, or present any arguments thereto. See
Req. Reh’g 1—5.
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, to responses to a
new ground of rejection designated pursuant to § 41.50(b), or presentations
of new arguments based upon recent decisions of the Federal Circuit.
37 C.F.R. § 41.52.
ISSUES ON REHEARING
Appellants argue that in our Decision we state that Lin uses the term
“statistical test” verbatim, when it does not do so. Req. Reh’g 4. Thus, it is
asserted that the alleged factual finding in the Decision is clearly erroneous,
and the related affirmance of the obviousness rejection should be
reconsidered. Id.
DISCUSSION
In the Request, Appellants refer to the argument presented on the
obviousness rejection in the Appeal Brief and Reply Brief that asserts that
Lin fails to teach a statistic “test” as required by the claims. Req. Reh’g 2—A
(citing App. Br. 22, Reply Br. 10—12). Appellants argue that Lin does not
disclose a statistical “test,” although the Decision erroneously states that it
does so. Id. at 4 (citing Dec. 12—13).
Appellants misinterpret the Decision. The Decision refers, in part, to
this portion of Lin:
For example, when many bottles of pharmaceutical pills move through
the supply chain, their progress can monitored by tracking devices 112-
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Appeal 2016-000021
Application 11/951,074
118 at various data reading points 706-718. Then, the progress of an
individual bottle is determined to have validly passed through the supply
chain 704, tracking information about the valid passage through the
supply chain can be stored and used to validate the passage of future
bottles. In one implementation, statistical models can be generated
based on the historical data to predict the relative time at which a bottle
will pass through each of the data reading points. When a later bottle
moves through the supply chain 740, and an event message to verify the
progress through the chain is missing, the timing information about the
passage of the bottle though the data reading points in the supply chain
can be compared to the historical data to validate the progress of the
bottle through the supply chain. Such an analysis may be used to, for
example, to detect the removal of a bottle from the supply chain and the
substitution of counterfeit pills for authentic pills in the bottle, if the
removal and substitution cause the bottle to move from one data reading
point to a next data reading point in an amount of time that is statistically
longer than past bottles.
Lin 1136 (quoted in Dec. 12) (italics added for emphasis).
The Decision states that
We are not persuaded by Appellants’ contention that Lin fails to teach
the execution of a statistical test, as it is directed to the generation of
statistics only, because the argument takes too limited a view of Lin’s
disclosures. Lin teaches that statistical models are generated based on
historical data to predict the relative time of the progress of a bottle—
so that model is used to “statisticallyJ test on the first information
from the first electronic marker [identification of a specific bottle] ...
and the third information that comprises the location of the asset in the
record [the location of the specific bottle in the process] as compared
to the at least one value [empirical historical data on location],” thus
disclosing that Lin’s statistical model is used for statistical testing as
claimed. Lin| 136 (emphasis added).
Dec. 12-13.
The Decision’s reference to Lin at paragraph 136 was intended to
refer to Lin’s disclosures, identified in the square brackets, as mapped to
some of the elements of claim 1, but does not indicate or suggest that the
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Appeal 2016-000021
Application 11/951,074
term “statistical test” is used verbatim in Lin. Lin describes the use of
historical data in statistical models for prediction of the relative time of
passage of bottles with comparison of the monitored location of actual
bottles, and we viewed the use of the model in this manner as the equivalent
of applying a statistical test. Appellants appeared to agree with this view,
referring to paragraph 136 of Lin as “describing” a statistical test. See App.
Br. 20-21.
Appellants did not agree, however, that Lin disclosed the use of the
statistical test on the first, second, and third “information.” See App. Br.
21—22; Reply Br. 10—12. Appellants argued that although the Examiner
found that Lin discloses the generation of statistics from the respective
markers that provide the “information,” it does not disclose the use of a
statistical test on that information. See Reply Br. 10. Appellants’argument
is based on an interpretation of claim 1 that the statistical test is applied on
the first, second, and third information only, and the test does not include the
consideration of the “one value,” except as a later comparator. App. Br. 21.
Although there are alternative approaches that can be taken to the
interpretation of claim 1, upon reconsideration, we are, however, persuaded
that the Specification supports Appellants’ view that the statistical test
should be limited to application to the “first,” “second,” and “third
information” only. See Spec. 42 45, Fig. 6. The Examiner’s findings
regarding the teaching of the associated independent “statistical test” claim
limitation rely solely on the teachings of Lin. See Ans. 8 (citing Lin 1136).
Lin teaches that statistical models are generated based on historical data and
that is used to validate the progress of assets, but there is no teaching that
there is a statistical test performed on information that is equivalent to the
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Appeal 2016-000021
Application 11/951,074
“first,” “second,” or “third” information, such as the identity of the product,
or its location. Lin 1136. Therefore, under the claim interpretation here,
Lin fails to teach the claim 1 limitation of “executing by the processor a
statistical test. . .,” and we cannot sustain the Examiner’s rejection of
representative claim 1, with the other claims standing or falling with it.
Thus, in view of the Appellants’ contentions, we grant the request and
reverse the Examiner’s rejection of claims 1—6 and 8—19 under 35 U.S.C.
§ 103(a) as unpatentable over Lin and Bridgelall, and claims 7 and 20 under
35 U.S.C. § 103(a) as obvious over Lin, Bridgelall, and Gould.
DECISION
We GRANT the Request for Rehearing and REVERSE the
Examiner's decision rejecting claims 1—20 under 35 U.S.C. § 103(a). The
rejection of claims 1—20 under 35 U.S.C. § 101 and the rejection of claims 7
and 20 under 35 U.S.C. § 112, second paragraph, stand AFFIRMED.
GRANTED
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