Ex Parte Jurmain et al

Board of Patent Appeals and Interferences

Nov 20, 2011

10387792 (B.P.A.I. Nov. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICHARD N. JURMAIN, MARY M. JURMAIN,
CHARLES F. JOHNSON, and ADRIAN PELKUS
____________________

Appeal 2009-013345
Application 10/387,792
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, STEVEN D. A. MCCARTHY, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Richard N. Jurmain et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1 and 9 as
unpatentable over Sirota (US 4,740,186, iss. Apr. 26, 1988) and Coudroy
(US 5,211,476, iss. May 18, 1993); claims 2, 3, and 10 as unpatentable over
Sirota, Coudroy, and Ta (US 4,776,179, iss. Oct. 11, 1988); claims 1-4, 6, 8-
10, 15, and 22-24 as unpatentable over Edatsune (US 5,802,488, iss. Sep. 1,
1998), Coudroy, and Ta; claims 11 and 13 as unpatentable over Edatsune,
Coudroy, Ta, and Pracas (US 5,941,750, iss. Aug. 24, 1999); claims 12 and
17 as unpatentable over Edatsune, Coudroy, Ta, and Goldman (US
5,705,981, iss. Jan. 6, 1998); and claims 6, 8, 14, and 18-28 as unpatentable
over Edatsune, Coudroy, Ta, and Dotan (US 5,174,656, iss. Dec. 29, 1992).
Claims 5, 7, and 16 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART, and denominate our affirmance as a NEW
GROUND OF REJECTION.

THE INVENTION
The claims are directed to an infant simulator for use “in educational
programs for educating prospective parents about the realities of
parenthood” and assisting in educating and training personnel in the child-
care field. Spec., p. 1, ll. 13-15. Claims 1 and 2, reproduced below, are
illustrative of the claimed subject matter.
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1. An infant simulator, comprising:
(a) a mannequin having a temperature sensor effective for
sensing the environmental temperatures to which the
mannequin is exposed; and
(b) a means effective for recording the sensed
temperature.
2. An infant simulator, comprising:
(a) a mannequin having a temperature sensor effective for
sensing the environmental temperatures to which the
mannequin is exposed; and
(b) a means for generating a perceptible thermal exposure
signal continuously throughout a thermal exposure period when
the sensed temperature falls above or below a defined
acceptable temperature range.

OPINION
Claims 1 and 9 as unpatentable over Sirota and Coudroy
The dispositive issue raised with respect to the rejection of claims 1
and 9 as unpatentable over Sirota and Coudroy is whether the Examiner has
articulated an apparent reason for modifying Sirota to provide a means for
recording the sensed temperature.
We find that Sirota discloses a doll provided with a plurality of
sensors, including a temperature sensor, for sensing different parameters of
an environment in the vicinity of the doll. Col. 3, ll. 3-9. Sirota’s doll is
designed to simulate a human being in order to increase its attractiveness to
a child and to provide educational value. Col. 1, ll. 27-34. When the
temperature sensor 13 senses a temperature that exceeds a predetermined
level or threshold, it produces an impulse signal, which in turn switches a
trigger 33 and actuates a delay element 31 set to provide a delay of
approximately 30-40 seconds, thereby also actuating a sonic transducer 36 to
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produce a sound that imitates, for example, crying. Col. 3, ll. 21-39. When
the temperature sensor 13 senses a low temperature, indicating a cold
environment, it produces an impulse that actuates a trigger 35, turning on a
light located in the area of the doll’s throat to produce an image of a frog in
the throat, thus simulating that the doll has caught a cold. Col. 3, l. 62 to col.
4, l. 2. In either case, the light indicating a frog in the throat or the sound
imitating crying is turned off at the end of the 30-40 second delay supplied
by the delay element 31. Col. 1, ll. 53-55; col. 4, ll. 3-7. Sirota also
discloses a rocking signal sensor 14, and teaches that the child can cause the
light and/or sound generating signals to stop by rocking the doll. Col. 1, ll.
50-53; col. 4, ll. 7-16.
In the rejection, the Examiner found that Sirota does not disclose a
means effective for recording the sensed temperature. Ans. 3. The
Examiner seemingly contradicts that finding in responding to Appellants’
arguments, stating that “Sirota discloses recording exposure temperature by
a sensor in order that the proper output may be generated in response to the
temperature.” Ans. 8. The Examiner’s position that a sensor that senses
temperature and generates a signal in response thereto is a “means effective
for recording the sensed temperature,” as called for in Appellants’ claim 1, is
untenable. When claim terminology is construed in the United States Patent
and Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Appellants’ Specification clearly uses the term “record” in the sense
of registering on media in some permanent form for future use. See Spec., p.
73, ll. 25-32 (describing recording for later review by the program
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administrator); Webster's New World Dictionary 1187 (David B. Guralnik
ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984) (defining “record” as “1. a)
to put in writing, print, etc. for future use”). The Examiner has not pointed
to, and we do not find, any teaching in Sirota of registering the sensed
temperature in any permanent form for future use. Accordingly, we agree
with the finding articulated by the Examiner in formulating the rejection,
namely, that Sirota does not teach a means effective for recording the sensed
temperature.
The Examiner found that Coudroy teaches a temperature recording
device, and reasoned that it would have been obvious to provide Sirota’s doll
with a temperature recording device as taught by Coudroy, “since such a
modification would provide continued temperature monitoring.” Ans. 4.
We find that Coudroy describes a temperature monitoring device that
can be placed in a temperature controlled environment and that “permits
continuous temperature monitoring to be carried out.” Col. 1, ll. 20-24. The
device is used for monitoring temperatures in a temperature-controlled
environment, such as in a cold room, a pallet, a container, a refrigerated
truck, a cellar, or a medical environment, for storing food and/or products,
so that a determination can be made as to whether there is or has been a
problem with the temperature regulating mechanism and thereby whether the
goods may have spoiled, deteriorated, or become damaged. Col. 1, ll. 9-19;
col. 2, ll. 34-37. Coudroy’s device comprises a recorder device 10 which
takes recordings of temperature at set intervals. Col. 2, ll. 17-18. At an
appropriate time “the recorder can be removed and the contents thereof
interrogated by a reader 14.” Col. 2, ll. 40-42.
Coudroy evidences that devices for recording temperatures in
controlled environments were known in the art at the time of Appellants’
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invention. It is not apparent why a person of ordinary skill in the art would
have been prompted to provide Sirota’s doll with a temperature recording
device for recording the temperatures sensed by sensor 13 for future review,
and the Examiner’s explanation that “such a modification would provide
continued temperature monitoring” is unavailing. As noted in our findings
above, Sirota’s doll is designed so as to closely simulate a human being
(baby) so as to be an appealing toy to a child and to provide some
educational value to that child. The purpose of Sirota’s temperature sensor
is to prompt a simulated response by the doll to environmental conditions.
Unlike the applications discussed for the Coudroy device, once the simulated
response has been invoked in Sirota’s doll, the sensed temperatures have no
future use. As such, there is no need for the sensed temperatures to be
recorded.
For the above reasons, we agree with Appellants that there is no
apparent reason to modify Sirota as proposed by the Examiner to provide
means effective for recording the sensed temperatures, and that the
Examiner’s rejection appears to be based on impermissible hindsight
reconstruction. See App. Br. 10. We reverse the rejection of claim 1 and
claim 9, which depends from claim 1, as being unpatentable over Sirota and
Coudroy.
Claim 3 as unpatentable over Sirota, Coudroy, and Ta
Claim 3 depends from claim 1 and thus also requires “a means
effective for recording the sensed temperature.” The Examiner’s application
of the additional teachings of Ta does not make up for the deficiency in the
combination of Sirota and Coudroy discussed above. Thus, we also reverse
the rejection of claim 3 as unpatentable over Sirota, Coudroy, and Ta.
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Claims 2 and 10 as unpatentable over Sirota, Coudroy, and Ta
The Examiner’s proposed modification of Sirota in view of Coudroy
to provide a temperature recording device (see Ans. 4) is not germane to
claims 2 and 10, which do not require a temperature recording device.
Accordingly, the deficiency in the combination of Sirota and Coudroy does
not fatally taint the rejection as to claims 2 and 10.
Claim 2 requires “a means for generating a perceptible thermal
exposure signal continuously throughout a thermal exposure period when the
sensed temperature falls above or below a defined acceptable temperature
range.” As defined in Appellants’ Specification, “the phrase ‘thermal
exposure period’ means the time period beginning when a sensed
temperature falls outside a defined acceptable temperature range and ending
when a subsequently sensed temperature falls within the defined acceptable
temperature range.” Spec., p. 36, ll. 19-22.
The Examiner conceded that Sirota does not disclose a means for
generating a continuous perceptible signal as claimed. See Ans. 4. The
Examiner, however, found that Ta teaches a continuous perceptible signal
“via a second oscillator (claim 7 of reference),” and concluded that it would
have been obvious to provide a continuous perceptible signal in Sirota,
“since such a modification would provide continuous monitoring.” Ans. 4.
Appellants argue that Ta’s oscillation signal is not a “perceptible”
signal, because it communicates with other electrical components, not with a
human. App. Br. 14-15. Appellants further argue that Sirota would not have
suggested providing a perceptible signal throughout the thermal exposure
period as claimed, and in fact teaches away from such a modification,
because such a feature would be considered an annoyance, thereby reducing
the play value of the doll. App. Br. 15.
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Accordingly, the issue joined in the appeal of the rejection of claim 2
as unpatentable over Sirota, Coudroy, and Ta is whether one of ordinary
skill in the art would have been prompted to modify Sirota to provide a
perceptible signal throughout the thermal exposure period.
The Examiner’s statement that “such a modification would provide
continuous monitoring” is not adequately informing as to why a person of
ordinary skill in the art would have been prompted to modify Sirota so as to
provide “a means for generating a perceptible thermal exposure signal
continuously throughout a thermal exposure period when the sensed
temperature falls above or below a defined acceptable temperature range,” as
called for in claim 2.
We find, however, that Sirota does in fact provide disclosure that
points to an apparent reason why a person of ordinary skill in the art would
have been prompted to modify Sirota’s circuitry so that Sirota’s sonic
transducer 36 is actuated to produce a crying sound throughout the thermal
exposure period. Specifically, in the context of discussing the possible
means for stopping, or turning off, the various perceptible signals, such as
the audio signal of the sonic transducer 36, triggered by the impulse signal
from one of the sensors, such as the temperature sensor 13, Sirota teaches
that “[g]enerally, when a child does not rock the doll, it continues crying ….
When a child rocks the doll, these signals stop. Thus, the child’s care
(rocking the doll) silences the doll.” Col. 4, ll. 13-17. As already noted in
our findings above, Sirota’s doll is designed to simulate a human being in
order to increase its attractiveness to a child and to provide educational
value. “The greater is the resemblance of the doll to a human being, the
higher is its attractiveness for a child.” Col. 1, ll. 27-29.
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By continuing to emit a crying sound as a reaction to unpleasant or
uncomfortable environmental factors until the unpleasant or uncomfortable
factor is ameliorated, either by being comforted by rocking or by ceasing to
be exposed to the environmental condition that invoked the crying response
(e.g., a temperature outside an appropriate or comfortable range), Sirota’s
doll’s reaction would closely simulate that of a human baby, thereby
increasing its attractiveness for a child. Thus, a person of ordinary skill in
the art would have been prompted to modify Sirota’s circuitry, to the extent
necessary,1 so that, once actuated, the sonic transducer 36 will continue in its
actuated state until after either the temperature sensor 13 senses a
temperature that falls within an acceptable comfortable range or the rocking
sensor 14 senses that the child is rocking the doll, in order to more closely
simulate the reactions of a human child/baby, thereby increasing the doll’s
attractiveness to a child.
We find that Ta evidences that temperature-monitoring systems
capable of generating an actuation signal for actuating a controlled element
(a compressor of a vehicle air conditioning system in the case of Ta’s
system) were known at the time of Appellants’ invention. See Ta, col. 2, ll.
34-41. Accordingly, the record before us indicates that the modification of
Sirota’s control system (which controls, inter alia, the sonic transducer 36)
so as to actuate the sonic transducer 36 throughout the thermal exposure
period, at least in the case where the doll is not rocked by the child prior to

1 If the time period between temperature samples is smaller than the delay
time set by delay element 31, Sirota’s sonic transducer will continue in its
actuated state continuously throughout the thermal exposure period, that is,
until 30-40 seconds (the delay time set by delay element 31) after the last out
of range temperature is sensed.
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an end of the thermal exposure period, would not have been beyond the
technical grasp of a person of ordinary skill in the art.
For the above reasons, we sustain the rejection of claim 2 under 35
U.S.C. § 103(a) as unpatentable over Sirota in view of Ta. We also sustain
the rejection of claim 10, for which Appellants have not presented any
separate argument, and which thus falls with claim 2. See 37 C.F.R.
§ 41.37(c)(1)(vii). In affirming a multiple reference rejection under
35 U.S.C. § 103, the Board may rely on fewer than all of the references
relied on by the Examiner in an obviousness rationale without designating it
as a new ground of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961).
In this case, however, because our rationale in affirming the rejection differs
from that articulated by the Examiner, we denominate the affirmance as a
new ground of rejection pursuant to 37 C.F.R. § 41.50(b), in order to give
Appellants an opportunity to respond thereto.
Claims 1-4, 6, 8-15, and 17-28 as unpatentable over Edatsune, Coudroy,
and Ta (and/or in further view of Pracas, Goldman, or Dotan)
Edatsune, in relevant part, describes a stuffed toy provided with a
temperature sensor 34 and a speech recognition unit 5 including a response
content creation unit 33 that creates a response “(e.g., ‘It’s hot, isn’t it?’ or
‘It’s cold, isn’t it’?)” based in part on the temperature data. Col. 8, ll. 7-12;
col. 13, ll. 6-20, 46-56. The response data created by the content creation
unit 33 is input into a speech synthesis unit 6 and drive control unit 7 and
output by a speaker 8 embedded in the stuffed toy. Col. 8, ll. 57-61. The
Examiner found that Edatsune lacks a means for recording temperature, as
called for in claim 1. Ans. 5. The Examiner also implicitly found that
Edatsune lacks a perceptible signal generating means for generating a
perceptible signal throughout the thermal exposure period, as called for in
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claim 2. See id. (proposing modification of Edatsune to provide a
perceptible signal that is continuous via a second oscillator as taught by Ta).
The Examiner, relying on the teachings of Coudroy and Ta in the
same manner as in the Sirota rejections discussed above, reasoned that it
would have been obvious to provide a temperature recording device as
taught by Coudroy, and a perceptible signal that is continuous as taught by
Ta, because such modifications would provide continuous temperature
monitoring or continuous monitoring. Ans. 5.
We first address the proposed modification to provide Edatsune’s
stuffed toy with a temperature recording device. This proposed modification
to Edatsune suffers from the same flaw as the similar proposed modification
to Sirota discussed above. Unlike the applications discussed for the
Coudroy device, once the response is generated and output from speaker 8 in
Edatsune’s stuffed toy, the sensed temperatures have no future use. As such,
there is no need for the sensed temperatures to be recorded.
For the above reason, the Examiner’s conclusion of obviousness of
the subject matter of claim 1 and claims 3, 9, 15, and 22-24 depending from
claim 1 does not have rational underpinning. We reverse the rejection of
these claims as unpatentable over Edatsune, Coudroy, and Ta.
Inasmuch as Edatsune’s stuffed toy is designed to generate discrete
greetings, or responses, based on the sensed current temperature, there is no
apparent reason to modify the sound generating system to generate a
perceptible signal continuously throughout a thermal exposure period. Thus,
the Examiner’s conclusion of obviousness of the subject matter of claim 2
and claims 4, 6, 8, and 10 depending from claim 2 lacks rational
underpinning. We reverse the rejection of these claims as unpatentable over
Edatsune, Coudroy, and Ta.
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In rejecting the remaining dependent claims, the Examiner does not
rely on the additional teachings of Pracas, Goldman, or Dotan, or articulate
any additional reasoning, that would make up for the deficiencies in the
rejections of independent claims 1 and 2. Thus, we reverse the rejections of
claims 11 and 13 as unpatentable over Edatsune, Coudroy, Ta, and Pracas;
of claims 12 and 17 as unpatentable over Edatsune, Coudroy, Ta, and
Goldman; and of claims 6, 8, 14, and 18-28 as unpatentable over Edatsune,
Coudroy, Ta, and Dotan.

DECISION
For the above reasons, the Examiner’s decision is affirmed as to
claims 2 and 10 and is reversed as to claims 1, 3, 4, 6, 8, 9, 11-15, and 17-
28. We denominate our affirmance of the rejection of claims 2 and 10 as
unpatentable over Sirota and Ta as a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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