Ex Parte Krishnan et alDownload PDFPatent Trial and Appeal BoardSep 28, 201612855730 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/855,730 08/13/2010 201 7590 10/04/2016 UNILEVER PATENT GROUP 800 SYLVAN A VENUE ENGLEWOOD CLIFFS, NJ 07632-3100 FIRST NAMED INVENTOR Srinivasan Krishnan 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. J9149US 1540 EXAMINER WESTON, TIFFANYC ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 10/04/2016 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): patentgroupus@unilever.com pair_unilever@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SRINIVASAN KRISHNAN, JAMIE GORDON NICHOL, and BRUCE CICHOWLAS Appeal2014-009571 Application 12/855,730 Technology Center 3700 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Srinivasan Krishnan et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 3, 5-8, and 11, which are all the pending claims. See Br. 3. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. According to Appellants, the real party in interest is Conopco, Inc., d/b/a Unilever. Br. 3. Appeal2014-009571 Application 12/855,730 CLAIMED SUBJECT MATTER Appellants' disclosed invention relates to "a hand holdable device for simultaneously measuring multiple parameters defining a person's skin or hair condition." Spec., p. 1, 11. 8-9. Claim 1, reproduced below with emphasis added, is the sole independent claim and is representative of the subject matter on appeal. 1. A device for evaluating skin or hair condition compnsmg: (i) a housing; (ii) a hydration meter mechanism for measuring moisture, the meter being supported within the housing and having an external surface contactable against skin or hair to measure moisture content thereof, the meter comprising at least two adjacent metallic wires that are embedded within a sensing cell with their capacitance sensitive to differences in dielectric constant of the environment of the sensing cell; (iii) a camera held within the housing for electronically recording images of an area of skin or hair to be evaluated, the camera being supported within the housing, the electronically recordable images being received through a light transparent window at a front end of the housing; (iv) a diffuser upstream from a tunnel leading to the light transparent window, the diffuser being unitarily formed with walls of the tunnel; and (v) at least one light emitting diode arranged between the camera and the diffuser; wherein the window is surrounded by the external surface of the hydration meter; wherein the external surface of the hydration meter is circular or oval and thereby forms a respective circular or oval window; 2 Appeal2014-009571 Application 12/855,730 wherein the hydration meter and camera generate data in analog form, and wherein the data in analog form is converted to digital values and then retransformed into an analog form as an audio wave signal for subsequent transformation back into a digital signal; and wherein LED emitted light will scatter back and forth along the diffuser and down the tunnel to finally exit through the transparent window at the front end of the housing. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Pugliese us 4,398,541 Aug. 16, 1983 Amerena us 4,860,753 Aug. 29, 1989 Ouellette us 5,938,593 Aug. 17, 1999 Bandic US 2008/0194928 Al Aug. 14, 2008 REJECTIONS The following rejections are before us for review: I. Claims 1, 3, 5-7, and 11 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Final Act. 3. II. Claims 1, 3, 5-7, and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bandic, Amerena, and Ouellette. Id. at 4--8. III. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Bandic, Amerena, Ouellette, and Pugliese. Id. at 8. 3 Appeal2014-009571 Application 12/855,730 ANALYSIS Rejection I- Claims 1, 3, 5-7, and 11 as failing to comply with the enablement requirement The Examiner determined that the Specification fails to provide an enabling disclosure for the limitation in claim 1 reciting that "data in analog form is converted to digital values, and then retransformed into an analog form as an audio wave signal for subsequent transformation back into a digital signal." Final Act. 3. The Examiner explained that "[i]t is unclear how the signal is retransformed into an analog form as an audio wave signal from a digital signal that is not an audio signal," and that "[t]he disclosure includes no details on this signal processing technique for this type of transformation." Id. Appellants argue that the Specification "provides adequate information to enable ... [one of ordinary skill in the art] in the field of instrumental skin analysis and signal processing to perform the data transformation as presented in claim 1 as a matter of routine implementation using well known data handling techniques and instrumentation including commercially available microcontrollers." Br. 8 (citing i-f 30 of U.S. Patent Application Publication No. US 2012/0041284 Al, which corresponds to Spec., p. 6, 1. 23 -p. 7, 1. 6). Appellants also point to a Declaration submitted May 8, 2014, under 37 C.F.R. § 1.132 by Ms. Jamie Gordon Nichol (hereafter "Nichol Declaration") in order to "illustrate the understanding of the [person of ordinary skill in the art] in the field of microcontrollers." Br. 8; see id. at 17, Evidence App. The Examiner responds that "the affidavit referred to by Appellant[ s] was submitted in a different application and was not considered timely in the instant 4 Appeal2014-009571 Application 12/855,730 application." Ans. 8. The Examiner is correct in identifying this procedural deficiency. The rules for filing an appeal to the Board require that "[a] brief shall not include any new or non-admitted amendment, or any new or non- admitted affidavit or other Evidence." 37 C.F.R. § 41.37(c)(2). The Patent Rules also state that "[a]n affidavit or other evidence submitted after a final rejection or other final action ... may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented." 3 7 C.F .R. § 1.116( e ). Our review of the record of the instant application reveals that the Examiner denied entry of the Nichol Declaration because it was filed after a final rejection and because Appellants "failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented." Advisory Act. 1. As such, because the Nichol Declaration has not been entered in the record of the instant application, it represents non-admitted evidence, which we do not consider here. Insofar as the substance of the enablement requirement is concerned, the dispositive issue is whether Appellants' disclosure, considering the level of ordinary skill in the art as of the date of the application, would have enabled a person of such skill to make and use the claimed invention without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982). Some factors to be considered in determining whether a disclosure would require undue experimentation include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, ( 5) the state of the prior art, ( 6) the relative skill of those in 5 Appeal2014-009571 Application 12/855,730 the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Here, the Examiner considers relevant Wands factors, and concludes that Appellants' Specification lacks sufficient disclosure to enable those having ordinary skill in the art to make and/or use the claimed invention without undue experimentation. See Ans. 7-8. Namely, the Examiner explains: By applying In [r]e Wands factors, the scope is not enabling since: the state of the prior art describes creating an audio signal based on digital values; the amount of direction provided by the invention does not include a signal processing technique for transforming the signal from non-audio digital to audio analog signal; and the quantity of experimentation needed to make the claimed invention based on the content of the disclosure would be undue experimentation as no exact examples of the claimed scope are found in the original disclosure. Ans. 7. As to the state of the prior art; we agree with the Examiner's determination that, though the prior art describes producing an audio signal from digital values, Appellants' disclosure does not provide sufficient direction for implementing a signal processing technique that transforms a non-audio digital signal into an analog audio signal. Notably, the description in the Specification cited by Appellants "is essentially the same as the claim language," and "does not include an explanation of the signal processing technique nor a particular processing element that the technique occurs on." Ans. 8; see Spec., p. 6, 1. 23 -p. 7, 1. 6. Although the Specification mentions a microcontroller, "there does not appear to be an explanation of how the microcontroller can transform a signal from a non- audio form to an audio form." Ans. 8. As such, the Specification does not 6 Appeal2014-009571 Application 12/855,730 sufficiently demonstrate the existence of working examples of a device that transforms data as claimed. Moreover, Appellants do not specifically respond to the analysis of the Wands factors provided in the Examiner's Answer and, most notably, do not present any evidence on the record to support their assertion that implementing the data transformation required by claim 1 would be a matter of routine implementation applying well-known data handling techniques and microcontrollers. See Br. 8. After careful consideration of the record before us, we agree with the Examiner that Appellants' Specification does not provide an enabling disclosure of converting the analog data from the hydration meter and camera to digital values that are retransformed into an analog audio wave signal such that one of ordinary skill in the art could make and use the claimed invention without undue experimentation. Accordingly, we sustain the rejection of claims 1, 3, 5-7, and 11under35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Rejection II- Claims 1, 3, 5-7, and 11 as unpatentable over Bandic, Amerena, and Ouellette Appellants present arguments against Rejection II of claims 1, 3, 5-7, and 11 as a group. See Br. 9-12. We select independent claim 1 as representative of the issues that Appellants present with regard to Rejection I, with dependent claims 3, 5-7, and 11 standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner found that Bandic teaches a device for evaluating skin or hair condition, substantially as claimed, "but does not teach the specific skin moisture sensors." Final Act. 5---6. Next, the Examiner found that 7 Appeal2014-009571 Application 12/855,730 "Amerena teaches a skin monitoring apparatus with a hydration meter mechanism for measuring moisture ... comprising at least two adjacent metallic wires with their respective capacitance sensitive to differences in dielectric constant." Id. at 6 (citing Amerena, Abstract, Figs. 3--4, col. 3, 11. 31-58). The Examiner concluded that, given the teachings of the prior art, it would have been obvious to one of ordinary skill in the art at the time of the invention "to modify Bandic with the skin moisture electrodes of Amerena, because the skin moisture sensors are a simple substitution of [one] known element for another to yield predictable results and leads to better skin analysis using more than one method of determining skin parameters." Id.; see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The Examiner acknowledged that the combination of Bandic and Amerena does not disclose "the conversion of analog data to digital data and then to analog audio data." Final Act. 6. However, the Examiner found that "Ouellette teaches a device to measure skin moisture wherein the data is generated in analog form, and wherein the data in analog form is converted to digital values and then retransformed into an analog form as an audio signal for transmission." Id. (citing Ouellette, col. 11, 1. 50- col. 12, 1. 52). The Examiner interpreted the recitation of "for subsequent transformation back into a digital signal" as being directed to intended use, and found that "[t]he audio signal of Ouellette is capable of being transformed into a digital signal using a simple analog to digital converter (ADC)." Id. at 7. The Examiner concluded that, given the teachings of the prior art, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the combined teachings of Bandic and Amerena with the signal 8 Appeal2014-009571 Application 12/855,730 processing technique taught by Ouellette, "because it is merely the application of a known technique [(i.e., Ouellette's signal processing)] to improve similar devices in the same way." Id.; see also KSR Int'! Co., 550 U.S. at 417. Appellants argue that Amerena does not teach or suggest a hydration meter having "at least two adjacent metallic wires that are embedded within a sensing cell," as claimed. See Br. 10-11. In particular, Appellants assert that "Amerena discloses an embodiment where the electrodes make direct electrical contact with the skin" (id. at 10 (citing Amerena, col. 3, 1. 40)), whereas, in contrast, "the claimed capacitive pickup never contacts the skin electrically because the electrode wires are 'embedded in a sensing cell' as claimed" (id. at 11 (underlining omitted)). This argument is not persuasive of error because it insists upon an overly narrow reading of the language of claim 1, which does not exclude direct electrical contact between the wires of the hydration meter sensing cell and the skin. Appellants do not point to, nor do we discern, anything in the Specification that would necessitate an interpretation of "embedded within" as excluding direct contact between the wires and the skin. The Specification describes only that "[m]etallic electrical conducting wires, preferably of copper on a circuit board, are embedded within a hardened resin of the sensing cell." Spec., p. 4, 11. 21-23. Figure 3 of Amerena shows electrodes 26, 28 and metallic wires 46, 48 inside body channel 42 of probe unit 22, such that the electrodes and wires are sufficiently "embedded within," as recited in the claim.2 2 We note that an ordinary meaning of "within" is simply "in or into the interior" or "inside." See Merriam-Webster's Collegiate Dictionary (I Ith 9 Appeal2014-009571 Application 12/855,730 Appellants argue that Ouellette does not teach or suggest "wherein the data in analog form is converted to digital values and then retransformed into an analog form as an audio wave signal for subsequent transformation back into a digital signal," as claimed. See Br. 11-12. In particular, Appellants assert that "Ouellette' s measured skin condition is displayed and 'communicated audibly through a voice synthesizer system."' Id. at 11 (underlining omitted). According to Appellants, "[a] key difference between claim 1 and Ouellette is that the claimed audio frequency wave or electrical signal could not be heard or understood by a person." Id. "This is because it is a wave or electrical signal for subsequent transformation back into a digital signal as presently claimed and is therefore inaudible." Id. We are not persuaded by Appellants' argument. Initially, we note that Appellants' reliance on the Nichol Declaration to support their position (see id. at 11-12) is unavailing because, as discussed supra, the Nichol Declaration has not been entered into the record of the instant application. See Advisory Act. 1. Therefore, the Nichol Declaration is not considered. With regard to the argument that the claimed audio wave signal is inaudible (see Br. 11 ), as stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), "the name of the game is the claim." It is well established that limitations not appearing in the claim cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA ed. 2003). This ordinary meaning is consistent with the claim language and Appellants' Specification, which does not impart any special definition to compel a different, or narrower, construction of "within," as recited in the claim. See Spec., p. 4, 11. 21-23. 10 Appeal2014-009571 Application 12/855,730 1982). Here, claim 1 only recites, in relevant part, that "the data in analog form is converted to digital values and then retransformed into an analog form as an audio wave signal for subsequent transformation back into a digital signal." Br. 15, Claims. App. We see nothing in the language of claim 1 that would limit the audio wave signal to inaudible form. However, even if the claim did require that the audio wave signal be inaudible, Ouellette discloses "voice synthesizer 136 having two programmable voice synthesizer control chips U2 and U3." Ouellette, col. 12, 11. 25-27 (boldface omitted). "The outputs of the voice chips, SPK, are connected through blocking diodes D 1 to drive a transistor Q3 that acts in combination with resistors R24, R25 and a potentiometer VRl to produce a volume control for the speaker LSI." Id., 11. 32-36 (boldface omitted). As such, the audio signal output from Ouellette' s voice chips U2, U3 to transistor Q3, resistors R24, R25, and potentiometer VRl would remain inaudible until it is emitted by speaker LS 1 as an audible audio output. To the extent that Ouellette' s system may produce a synthesized audible output from speaker LS 1, Appellants do not point to any evidence on the record, or provide any persuasive technical reasoning, to explain why the audio signal output from Ouellette' s voice synthesizer control chips U2, U3 would be different from the claimed audio wave signal. Appellants also argue that the Examiner erred in determining that the recitation in claim 1 of "for subsequent transformation back into a digital signal" pertains to intended use, because "the signal transformation or processing element is clearly dependent on device structure in order to effectuate the specifically claimed signal processing." Br. 12; see Final Act. 7. According to Appellants, "the device of claim 1 must contain the 11 Appeal2014-009571 Application 12/855,730 structural elements to process the signal as claimed." Br. 12. We are not persuaded of error in the Examiner's interpretation of the claim. The broadest reasonable interpretation of claim 1 does not require the audio wave signal actually be transformed back into a digital signal. Nor does the claim positively recite a specific structural element that must be configured to perform this intended future function. Rather, the claim language merely indicates that the audio wave signal is intended to be transformed back into a digital signal. Appellants also argue that one of ordinary skill in the art "would have no reasonable expectation of success for the claimed skin and hair condition evaluation device from the combination of the art of record and their knowledge in the field absent hindsight of applicant's invention." Br. 14. Appellants assert that they "have surprisingly found that a combination of the claimed hydration meter with a specific electrode, a camera and their relationship and cooperation with each other, and specific signal processing provided enhanced functionality." Id. This argument is not persuasive because Appellants do not offer any evidence or explanation to show that the results of the claimed invention are unexpected compared with the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.") (citing In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). Moreover, regarding the allegation of improper hindsight, Appellants do not identify any knowledge relied upon by the Examiner that was gleaned only from Appellants' disclosure and that was not otherwise within the level of 12 Appeal2014-009571 Application 12/855,730 ordinary skill at the time of the invention. See Jn re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Accordingly, we sustain the rejection of claim 1, and of claims 3, 5-7, and 11 falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over Bandic, Amerena, and Ouellette. Rejection III - Claim 8 as unpatentable over Bandic, Amerena, Ouellette, and Pugliese With respect to the rejection of claim 8, Appellants initially argue that "Pugl[i]ese fails to remedy the deficiencies of Bandic, Amerena[,] and Ouellette," implicitly relying on dependency from independent claim 1. Br. 12. As we do not find a deficiency in the combination of Bandic, Amerena, and Ouellette, this argument does not apprise us of error in the Examiner's rejection of this claim. Appellants also argue that "the polarizing plate of Pugliese ... has nothing to do with the claimed hydration meter using capacitance/ dielectric constant," because Pugliese's hydration meter "is based on refractive index and ... us[ es] light to measure hydration." Id. at 13 (emphasis added). This argument is not persuasive of error. To the extent that Appellants appear to insist that Pugliese is non-analogous art, we note that the proper two-prong test to define the scope of analogous prior art is (1) "whether the art is from the same field of endeavor, regardless of the problem addressed," and (2) even "if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (internal citation omitted). In this regard, we agree with the 13 Appeal2014-009571 Application 12/855,730 Examiner that Pugliese is analogous art at least because "Pugliese is in the field of [Appellants'] endeavor of measuring skin moisture content and related parameters." Ans. 11. Moreover, to the extent that Appellants' argument suggests that there would have been no reason to combine the polarizing plate of Pugliese with the device of the proposed combination of Bandic, Amerena, and Ouellette, this line of argument is also unpersuasive. In this case, the Examiner sufficiently articulated reasoning based on rational underpinnings in support of the legal conclusion of obviousness applied in the rejection presented (namely, "because the polarized light allow[ s] for a more dynamic range of measurements related to the skin moisture"). Final Act. 8. Appellants' argument does not specifically address or identify fault in this reasoning articulated by the Examiner. After careful consideration of all the evidence and arguments, Appellants do not apprise us of error in the Examiner's reasoning for the conclusion of obviousness in the rejection presented. Accordingly, we sustain the rejection of claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Bandic, Amerena, Ouellette, and Pugliese. DECISION We AFFIRM the Examiner's decision rejecting claims 1, 3, 5-7, and 11 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. We AFFIRM the Examiner's decision rejecting claims 1, 3, 5-7, and 11 under 35 U.S.C. § 103(a) as being unpatentable over Bandic, Amerena, and Ouellette. 14 Appeal2014-009571 Application 12/855,730 We AFFIRM the Examiner's decision rejecting claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Bandic, Amerena, Ouellette, and Pugliese. 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)(l )(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation