Ex Parte Hyde et al

Patent Trials and Appeals Board

Jan 31, 2019

13721474 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/721,474 12/20/2012
44765 7590 02/04/2019
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg.4
Bellevue, WA 98005
FIRST NAMED INVENTOR
Roderick A. Hyde
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1108-004-001-000000 7367
EXAMINER
HAWTHORNE, OPHELIA AL THEA
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
ISFDocketlnbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK A. HYDE, JORDIN T. KARE,
DENNIS J. RIVET, and LOWELL L. JR. WOOD
Appeal2017-007239
Application 13/721,474
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 4, 5, 7, 9, 10, 20, 21, 23, 24, 40, 110-113, and
119--127. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Elwha LLC is the applicant and identified as the real party in interest.
Appeal Br. 5.
Appeal2017-007239
Application 13/721,474
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below with italics added, is illustrative of the
claimed subject matter.
1. An active torso support, comprising:
at least one force applying element adapted to apply force
to a portion of a torso of a subject, the at least one force applying
element including a torso contacting portion and a controllable
force-generating component for applying force to the portion of
the torso by moving the torso- contacting portion relative to a
surface of the portion of the torso, the at least one force applying
element adapted to apply force sufficient to provide support to
muscles in the torso to prevent or minimize discomfort or injury
to muscles or other structures in the torso due to loading, the at
least one force applying element including at least one
mechanical linkage, expandable element, inflatable element,
pneumatic element, or hydraulic element;
at least one positioning element adapted to position the at
least one force applying element with respect to the torso of the
subject; and
control circuitry including:
electrical circuitry configured to receive a height signal
indicative of a height of a portion of the active torso support from
a height sensor;
a memory adapted to store a time history of the height signal
indicative of the height of the portion of the active torso support;
posture determination circuitry configured to generate a signal
indicative of a posture of the subject based at least in part on the time
history of the height of the portion of the active torso support; and
actuation circuitry configured to control actuation of the at least
one force applying element responsive to the signal indicative of the
posture of the subject.
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Appeal2017-007239
Application 13/721,474
REJECTION
Claims 1, 4, 5, 7, 9, 10, 20, 21, 23, 24, 40, 110-113, and 119--127 are
rejected under 35 U.S.C. §102(e) as anticipated by Chang (US 8,928,484 B2,
issued Jan. 6, 2015) or alternatively under 35 U.S.C. § 103(a) as unpatentable
over Chang and Kline (US 5,749,838, issued May 12, 1998).
DISCUSSION
In the rejection of independent claim 1, the Examiner finds that Chang
discloses "electrical circuitry configured to receive a height signal indicative
of a height of a portion of the active torso support from a height sensor"
because Chang's "accelerometer 405 is connected to microprocessor 403 via
wires, i.e. electrical circuitry is capable of receiving a height signal of a
portion of ... the positioning element from accelerometer 405." Final Act.
19 (citing Chang, 2:41---62, 4:54---67, 5:1---62, 12:1---67, 13:1-58) (emphasis
added). The Examiner further finds that "there is not any further structure
required by the limitation nor is there any additional structure preventing the
circuitry of the sensor device 301[ofChang] from doing so." Id.
Independent Claim 121 contains a substantially similar limitation and the
Examiner relies on the same findings from Chang in the rejection of
claim 121. Appeal Br. 7 9 ( Claims App); Final Act. 13 .
Appellants contend that "Chang makes no reference whatsoever to
height in the Examiner-cited paragraphs or elsewhere." Appeal Br. 44.
Appellants argue that "the electrical circuitry of Chang receives 'data from
the tri-axial accelerometer about movement of the user,' and specifically
'acceleration' along the 'horizontal (x-), vertical (y-), and transverse (z)-
axes,' which are used to 'determine a postural description of the user."' Id.
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Appeal2017-007239
Application 13/721,474
at 43--44. Appellants further argue that the "presence of an accelerometer is
not sufficient to anticipate sensing of height or history information." Id.
at 44. The Examiner responds that "the Appellant has not provided any
evidence that the prior art device of Chang is incapable of being configured
to receive a height signal ... as by the Appellant's own disclosure the
mechanism by which height is determined is an accelerometer." Ans. 7.
The claims require that electrical circuitry be "configured to" receive
a height signal. "Configured to" is normally construed more narrowly than
"capable of' and, generally, is equivalent to "made to" or "designed to." See
e.g. In re Giannelli, 739, F.3d 1375, 1379 (Fed. Cir. 2014); Aspex Eyewear,
Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).
Although we appreciate the Examiner's reference to the use in Appellants'
Specification of an accelerometer to determine height, the Examiner has not
directed us to any disclosure that Chang's accelerometer is configured to
determine height nor do we discern any such disclosure in Chang. The mere
fact that Chang's accelerometer may be capable of generating a height signal
is not sufficient to satisfy the limitation in claims 1 and 121 of electrical
circuitry configured to receive a height signal. Therefore, we do not sustain
the rejection of independent claims 1 and 121 as anticipated by Chang.
Claims 4, 5, 7, 9, 10, 20, 21, 23, 24, 40, 110-113, 119, 120, and 122-127
depend from claim 1 or claim 121. We likewise do not sustain the rejection
of the dependent claims for the same reasons.
In the alternative rejection under 35 U.S.C. § 103(a), the Examiner
does not rely on Kline to cure the deficiencies in the disclosure of Chang
discussed above. Final Act. 5, 14--15. Consequently, we do not sustain the
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Appeal2017-007239
Application 13/721,474
Examiner's alternative rejection of claims 1, 4, 5, 7, 9, 10, 20, 21, 23, 24, 40,
110-113, and 119--127 under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision rejecting claims 1, 4, 5, 7, 9, 10, 20, 21, 23,
24, 40, 110-113, and 119--127 is reversed.
REVERSED
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