Ex Parte Krepel et al

Patent Trials and Appeals Board

Dec 23, 2014

11848476 - (D) (P.T.A.B. Dec. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENNETH J. KREPEL, BRIAN S. MCGINLEY,
NEAL A. RAKOW, PAUL A. SEVCIK, and CRISTINA U. THOMAS
____________

Appeal 2012-0094631
Application 11/848,4762
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, JOHN A. EVANS, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134(a) of the rejection
of claims 1, 2, 5–12, and 15–24. App. Br. 2. Claims 3, 4, 13, and 14 have
been canceled. Id. at 2. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).

1 Our decision refers to Appellants’ Appeal Brief filed Apr. 2, 2012 (“App.
Br.”); Appellants’ Reply Brief filed June 7, 2012 (“Reply Br.); Examiner’s
Answer mailed Apr. 26, 2012 (“Ans.”); and original Specification filed Aug.
31, 2007 (“Spec.”).
2 According to Appellants, the real party in interest is 3M Company and 3M
Innovative Properties Company. App. Br. 2.

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We AFFIRM.

STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention generally relates to determining compatibility
of components usable together in a set of components. Spec., p. 1, ll. 8–9.
More particularly, the invention relates to determining compatibility of
components of personal protection equipment (PPE) for forming an
approved personal protection (PP) configuration based on predetermined
criteria. Id. at p. 3, ll. 9–12. The approved PP configuration may be used in,
or may constitute, a PPE article, such as an article of respiratory protective
equipment. Id. at p. 5, ll. 15–18, p. 6, ll. 12–13.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphasis and some
paragraphing added to highlight the disputed limitations:
1. A method of determining compatibility of at least a first
component and a second component of an article of personal
protection equipment, the method comprising:
a) providing a first component of an article of personal
protection equipment with a first smart tag configured with first
data;
b) providing a second component of an article of personal
protection equipment with a second smart tag configured with
second data;
c) acquiring the first and second data;
d) determining if the first and second components are
compatible to be combined in an article of personal protection
equipment
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by processing the acquired first and second data in a
data processing system
against a predetermined criterion defining an approved
combination of components for a particular type of article of
personal protection equipment.

Reference
The prior art relied upon by the Examiner in rejecting the claims on
appeal:
Adams US 7,464,001 B1 Dec. 9, 2008

Rejection
Claims 1, 2, 5–12, and 15–24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Adams. App. Br. 3.

Issues
1. Under 35 U.S.C. § 103(a), whether the Examiner erred in finding that
Adams teaches or suggests determining if the first and second components
are compatible to be combined in an article of personal protection
equipment.
2. Under 35 U.S.C. § 103(a), whether the Examiner erred in finding that
Adams teaches or suggests processing the acquired first and second data in a
data processing system against a predetermined criterion defining an
approved combination of components.

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ANALYSIS3
Appellants do not substantively argue the claims separately, but
instead rely on the same arguments for all claims. In accordance with 37
C.F.R. § 41.37(c)(1)(iv) (2012), we select independent claim 1 as the
representative claim. Remaining claims 2, 5–12, and 15–24 stand or fall
together with claim 1.
Issue 1:
Appellants contend that Adams does not suggest “whether the first
and second components are compatible to be combined in an article of
personal protection equipment” and that the Examiner’s interpretation of the
term “compatible” is unreasonable. App. Br. 4, 7. According to Appellants,
“Adams only teaches an identification operation.” Id. at 4. Appellants argue
that “[i]dentification is not assessing compatibility for proper combination”
and that “Adams is only describing an operating procedure—namely, that
the same personal protection equipment should be used by the same person
each time.” Id. Appellants further argue that Adams “only suggests
suitability for use, that is, whether a single component or several single
components are operationally feasible” and that “[s]uitability for use is not
the same as suggesting whether two components are compatible to be
combined for use in the same piece of personal protection equipment.” Id.
at. 5. Appellants argue that Adams “only references that ability to identify
and distinguish parts from identical parts ‘for the purposes of possible

3 Subsequent to the close of prosecution before the Examiner, the Supreme
Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014)
(“Alice”) set forth a two-part test to determine compliance of a claim under
35 U.S.C. § 101. We invite the Examiner to review claims 1 and 11 in light
of the Court’s Alice decision and any subsequent agency guidance.
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assignment to individuals and for inspection and record keeping purposes.’”
Reply Br. 2. Appellants contend that “[s]uch identification and distinction
does not, however, suggest ‘determining if the first and second components
are compatible to be assembled as an approved PP configuration.’” Id.
Appellants further argue that “[t]he fact that certain parts may be assigned to
an individual does not mean that those parts are compatible with each other.”
Id. Appellants contend that “[i]n claim 1, applicants explicitly state that the
‘first and second components are compatible to be assembled as an approved
PP configuration’” and that “[n]owhere do the claims (or does applicants’
specification) suggest that simultaneous use of two different pieces of
equipment is an assembly of components.” Id. at 4.
We do not find Appellants contentions to be persuasive. We agree
with the Examiner’s findings and conclusion and adopt them as our own.
We note the following for emphasis.
Contrary to Appellants contentions, claim 1 does not explicitly state
that the first and second components are compatible to be assembled as an
approved PP configuration. Claim 1 recites “determining if the first and
second components are compatible to be combined in an article of personal
protection equipment.” See App. Br. 8 (Claims Appendix)(emphasis added.)
Further, the Examiner finds that “although the present invention is capable
of determining whether a breathing tube would operate properly with a
specific blower or head gear, the claims allow for other reasonable
interpretations as well.” Ans. 16. In particular, the Examiner finds that
“since each piece of equipment has both inspection and assignment data
recorded thereon . . . it would have been obvious to one of ordinary skill in
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the art that suitability for use can be used to determine if two or more
components are compatible to be combined.” Id.
Appellants are reminded that during examination proceedings, claims
are given their broadest reasonable interpretation consistent with the
specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Appellants’ Specification does not expressly define the term
“compatible to be combined in an article of personal protection equipment,”
as recited in claim 1. With respect to this term, Appellants’ Specification
describes “one or more components for use in assembling the PP
configuration” as “a configuration of components adapted to be used in the
work environment.” Spec., p. 17, ll. 20–23. Appellants’ Specification
further provides that “[o]ne or more components suitable for use in
exemplary embodiments . . . may also constitute or include a PPE article.”
Id. at p. 5, ll. 16–18. Appellants’ Specification lists known types of PPE
articles as including protective eyewear, protective headwear, hearing
protection devices, protective shoes, protective gloves, other protective
clothing such as coveralls and aprons, and protective articles such as sensors,
safety tools, detectors, global positioning devices, and mining camp lamps
and states that “[t]he present disclosure is not limited by any combination or
configurations.” Spec., p. 1, ll. 21–26; p. 6, ll. 20–22. Appellants’
Specification further states:
However, the original selected configurations of components
and articles based on an initial risk assessment may be in need
of revision because of additional risks being present during
actual use. For example, some half mask respirators with filters
are unsuitable for certain contaminant vapors and may require
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additional components or additional PPE’s (e.g., goggles)
depending on a variety of factors.

Spec., p. 3, ll. 6–11. Appellants’ Specification states that “[t]he present
exemplary embodiment also contemplates support for determinations
regarding whether the approved PP configuration is compatible with other
PP configurations, worker(s), or location(s).” Id. at p. 17, ll. 14–16.
Appellants’ Specification, therefore, at least suggests that simultaneous use
of two different pieces of equipment — i.e., a half mask respirator and
goggles — is an assembly of components that are compatible to be
combined in an article of personal protection equipment. Accordingly, we
are not persuaded that the Examiner has erred.
Issue 2:
Appellants contend that Adams “does not process the first and second
data in a data processing system to evaluate whether the components can be
properly combined in an article of personal protection equipment.” App. Br.
7. Appellants’ argue that “the Adams disclosure . . . relies on a user
inspection” and that “[t]he present invention, in contrast, is fashioned to
eliminate user error.” Reply Br. 3. Appellants further argue that “[r]elying
on the user to inspect the assembly is not a suggestion to ‘[process] the
acquired first and second data in a data processing system against a
predetermined criterion.’” Id. Appellants further contend that the claimed
predetermined criterion is not data that the scanner expects to receive.
Appellants argue that Appellants’ Specification defines predetermined
criteria as “a set of rules, guidelines, regulations, recommendations,
certifications, or the like that governs the compatibility of combinations of
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articles and components for configuring at least one PP configuration.” Id.
at 5.
We do not find Appellants’ contentions to be persuasive. The
Examiner finds that “the scanner system determines if the data . . . indicates
an approved configuration by returning whether or not the equipment has
been assigned and/or inspected” and that “any information regarding
different assignments or failure of inspection will indicate incompatibility of
combining the two devices in an article of personal protection equipment.”
Ans. 17–18. Adams discloses that “[p]rior to using the personal protective
equipment, authorized users can also use scanners to read the imbedded
transponders to ensure that the equipment has passed inspection.” Adams,
col. 2, ll. 23–25. Appellants’ Specification states that “[f]acilities are
sometimes allowed to determine their own predetermined criteria” and that
“[t]he present disclosure is not limited to OSHA rules and regulations, but
any and all other appropriate rules and regulations.” Spec., p. 6, ll. 8–11.
As such, we are not persuaded that the Examiner erred in finding that Adams
teaches or suggests processing the acquired first and second data in a data
processing system against a predetermined criterion defining an approved
combination of components.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and claims 2, 5–12, and 15–24, which Appellants do not argue
separately.
CONCLUSION
On the record before us, we conclude the Examiner has not erred in
the rejection of claims 1, 2, 5–12, and 15–24 under 35 U.S.C. § 103(a).

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DECISION
As such, we AFFIRM the Examiner’s rejection of claims 1, 2, 5–12,
and 15–24 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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