Ex Parte Jordan

Patent Trial and Appeal Board

May 29, 2018

12714603 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121714,603 03/01/2010
40334 7590
Jordan IP Law, LLC
12501 Prosperity Drive
Suite 401
Silver Spring, MD 20904
05/31/2018
FIRST NAMED INVENTOR
B. Delano Jordan
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.
1995-000109 7109
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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):
info@jordaniplaw.com
admin@jordaniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte B. DELANO JORDAN 1
Appeal2017-007866
Application 12/714,603
Technology Center 3600
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
B. Delano Jordan ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-12 and 29-32. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant's Appeal Brief lists Benivoli LLC as the real party in interest.
Br. 3.
Appeal2017-007866
Application 12/714,603
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a training device for water
conservation systems. Spec. i-f 2. Claim 1 is the sole independent claim and
is reproduced below:
1. A training device comprising:
a front end module including a user interface to receive a
plurality of inputs from a user, wherein the plurality of inputs
define an observed set of animal waste elimination behaviors;
and
a back end module to use a monitoring period and an
idleness period to train an animal monitoring system to monitor
an animal based on the plurality of inputs, the back end module
including a training module to calculate the monitoring period
and the idleness period and the idleness threshold.
REFERENCES RELIED ON BY THE EXAMINER
Andersson
Kates
Cressy
Kennington
Rowe
us 6, 104,294
US 7,409,924 B2
US 2009/0064940 Al
US 2010/0122662 Al
WO 2005/101273 Al
REJECTIONS
Aug. 15, 2000
Aug. 12, 2008
Mar. 12, 2009
May 20, 2010
Oct. 27, 2005
(I) Claims 1-12 and 29-32 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
(II) Claims 29-32 are rejected under 35 U.S.C. § 112, 4th paragraph,
as being in improper dependent form for failing to further limit the subject
matter of the claim upon which it depends.
(III) Claims 1, 2, 5, 8, 10, and 12 are rejected under 35 U.S.C.
§ 102( e) as anticipated by Cressy.
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Application 12/714,603
(IV) Claims 1, 2, 5, 8, 10, and 12 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cressy and Andersson. 2
(V) Claims 3, 4, 7, 9, and 11 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Cressy and Kennington, or, alternatively, over Cressy,
Andersson, and Kennington.
(VI) Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cressy and Kates, or, alternatively, over Cressy, Andersson, and Kates.
(VII) Claims 29--32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cressy and Rowe, or, alternatively, over Cressy,
Andersson, and Rowe.
OPINION
Rejection (I)
The Examiner finds that the limitation "a back end module to use a
monitoring period and an idleness period," in claim 1, is unclear, stating "it
appears that the monitoring period and the idleness period is only
functionally recited." Final Act. 2.
Appellant asserts that the originally filed Specification makes clear
that the recited monitoring period and idleness period are periods of time
"used by the back end module to train an animal monitoring system." Br.
11. According to Appellant, "functional language is entirely permissible in
apparatus claims and ... should be given patentable weight." Id.
2 Although the Examiner presents Rejections (III) and (IV) in the alternative
as part of the same rejection, Rejections (III) and (IV) are distinct rejections
and thus we address them separately.
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Application 12/714,603
The Examiner responds that it is not unclear whether a monitoring
period and an idleness period are time periods, but the limitation "to use" is
unclear. Ans. 2. The Examiner notes that the use of functional language is
permissible, but the way the functional language is recited in claim 1 is
unclear and grammatically incorrect. See id. at 2-3. In this regard, the
Examiner states, "it is unclear if appellant is attempting to claim the
monitoring period and the idleness period or not." Id. at 3.
We agree with Appellant that the claimed limitation is not indefinite.
See Br. 11. Paragraph 22 of Appellant's Specification discloses "a back end
module 30 to train the animal monitoring system 22 based on the plurality of
inputs." Spec. i-f 22. Paragraph 38 discloses "calculating the monitoring
period and the idleness period based on the inputs received." Id. i-f 38.
Figure 5 shows that the inputs and calculations are used to train the animal
monitoring system. Id., Fig. 5. As such, one of ordinary skill in the art
would understand that claim 1 requires a back end module that uses a
monitoring period and an idleness period to train the animal monitoring
system. In other words, the use of the monitoring period and idleness period
to train an animal monitoring system is a limitation upon the back end
module. In view of this, we do not sustain the Examiner's indefiniteness
rejection of claims 1-12 and 29-32.
Re} ection (II)
The Examiner contends that because the monitoring period and
idleness period are not positively recited in claim 1, claims 29-32 that
further define these periods do not further define the claimed subject matter.
Final Act. 3.
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Application 12/714,603
Appellant asserts that claims 29--32 further define claim 1 because
"the manner in which the claimed training module determines the
monitoring period and the idleness period is a further limitation of the
subject matter claimed." Br. 12.
Appellant has the better position. As discussed above, the monitoring
period and idleness period impose limitations upon the back end module.
Claims 29--32 further define the back end module by further defining the
monitoring period and idleness period. Accordingly, the Examiner's
rejection is not sustained.
Rejection (III); Anticipation by Cressy
According to the Examiner, Cressy discloses each of the limitations of
claim 1, including a training module to calculate the monitoring period, the
idleness period, and the idleness threshold, because the periods in Cressy are
based on the threshold, which is "the predetermined period programmed into
the unit such that when this threshold or predetermined period is reached, the
unit activates the device." Final Act. 5 (citing Cressy i-fi-149 and 51).
Appellant argues that Cressy does not calculate a period of time
because a user manually determines the appropriate time period. Br. 12.
Appellant asserts that Cressy's approach is prone to errors that lead to
improper activation of the device. Br. 12-13.
The Examiner responds that the limitation "to calculate" is a
functional limitation and that "Cressy is structurally capable of being
programmed to perform such function." Ans. 4. The Examiner states that
Cressy's "timer circuit 64 calculates the time sent by the sensor 54 when the
animal is detected and the time when the animal is done." Id.
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Application 12/714,603
Appellant's argument on this point is persuasive. Although we
appreciate that Cressy discloses detecting an animal (using sensor 54) when
the animal is "in the vicinity of the litter tray" (Cressy i-f 48) and also
discloses "sensing no activity to discern the animal has left the area" (Cressy
i-f 49), both of these functions are based on logic, i.e., they are merely checks
for whether a condition is satisfied. Further, although Cressy may be
capable of being programmed to perform various functions, including
performing a calculation as claimed, the Examiner does not explain
adequately how Cressy's current programming includes such a calculation.
Accordingly, we do not sustain the Examiner's anticipation rejection based
on Cressy.
Rejection (IV); Obviousness Based on Cressy and Andersson
The Examiner finds that even if Cressy does not include a training
module to calculate the monitoring period and the idleness period,
Andersson teaches such a module. Final Act. 5. The Examiner determines
that it would have been obvious to include Andersson's training module in
the back end module of Cressy "in order to train the animal and activate the
device based on certain calculated threshold so as to efficiently operate the
system." Final Act. 6.
Appellant argues that the Examiner "fails to articulate" what is
calculated in Andersson. Br. 13. Appellant contends that the Examiner also
has not identified which components in Andersson calculate. Id.
The Examiner responds that "the component that performs 'to
calculate' is obviously the computer system. Fig. 1 and col. 4, lines 36-45, of
Andersson et al. clearly shows the computer system, i.e. processor unit,
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Application 12/714,603
comparator, etc. performing the calculation on the first and second lengths."
Ans. 5. The Examiner states that time intervals must be determined by
"some sort of calculation," and that "values such as Vsense, Vref, are being
determined through calculation." Id. (citing Andersson, 2:61---68 and 4:51-
67, 5: 1-6).
Appellant has the better position here. Andersson discloses time
intervals having "a predetermined length." Andersson 2:62-3:2. As such,
the time interval is known beforehand, and even if a calculation is used to
determine the time interval, the Examiner does not adequately explain how
that calculation relates to a training module to calculate the monitoring
period and the idleness period. As to Andersson's Vsense and Vref, these
voltages are compared to each other using comparator 23, and if Vsense is
larger than Vref then activity is indicated, otherwise an inactive state is
indicated. Andersson 4: 51---61. Andersson' s comparator 23 makes a
comparison, but does not calculate. In view of this, a preponderance of the
evidence does not support the Examiner's findings that Andersson teaches a
training module to calculate the monitoring period and the idleness period,
as required by claim 1. Accordingly, we do not sustain the Examiner's
obviousness rejection based on Cressy and Andersson.
Rejections (V) and (VI); Claims 3, 4, 6, 7, 9, and 11
The Examiner does not rely on Kennington or Kates in any way that
would remedy the deficiency in Rejections (III) and (IV). See Final Act. 7-
10. Accordingly, we do not sustain the rejection of claims 3, 4, 7, 9, and 11
as unpatentable over Cressy, Andersson, and Kennington, and the rejection
of claim 6 as unpatentable over Cressy, Andersson, and Kates.
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Application 12/714,603
Rejection (VII); Claims 29-32
Claims 29--32 depend from claim 1. Claim 29 requires that "the
monitoring period is calculated as a function of a scaling value," and claim
31 requires that "the idleness period is calculated as a function of a scaling
value." Br. 23 (Claims App.) The Examiner relies on Rowe to teach a
scaling value but does not rely on Rowe in any way that would remedy the
deficiency in Rejections (III) and (IV). See Final Act. 11-12. Accordingly,
we do not sustain the rejection of claims 29--32 as unpatentable over Cressy,
Andersson, and Rowe.
DECISION
The Examiner's decision to reject claims 1-12 and 29-32 under
35 U.S.C. § 112, second paragraph, as indefinite is reversed.
The Examiner's decision to reject claims 29-32 under 35 U.S.C.
§ 112, 4th paragraph, as being of improper dependent form is reversed.
The Examiner's decision to reject claims 1, 2, 5, 8, 10, and 12 under
35 U.S.C. § 102(e) as anticipated by Cressy is reversed.
The Examiner's decision to reject claims 1, 2, 5, 8, 10, and 12 under
35 U.S.C. § 103(a) as unpatentable over Cressy and Andersson is reversed.
The Examiner's decision to reject claims 3, 4, 7, 9, and 11 under
35 U.S.C. § 103(a) as unpatentable over Cressy, Andersson, and Kennington
is reversed.
The Examiner's decision to reject claim 6 is rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cressy, Andersson, and Kates is reversed.
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Application 12/714,603
The Examiner's decision to reject claims 29--32 under 35 U.S.C.
§ 103(a) as unpatentable over Cressy, Andersson and Rowe is reversed.
REVERSED
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