Ex Parte Limbert et alDownload PDFPatent Trial and Appeal BoardJan 12, 201814185568 (P.T.A.B. Jan. 12, 2018) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/185,568 02/20/2014 Dean Philip Limbert 27585US01 8427 23446 7590 01/17/2018 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 EXAMINER TUN, NAY L ART UNIT PAPER NUMBER 2687 NOTIFICATION DATE DELIVERY MODE 01/17/2018 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): mhmpto @ mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEAN PHILIP LIMBERT, NIGEL GAYLARD, JOHN HINES, CHRISTOPHER LANG, ROBERT BUTLER, DAVID CREAGHAN, and PAUL DODDS Appeal 2017-008680 Application 14/185,568 Technology Center 2600 Before JOHN A. JEFFERY, BRUCE R. WINSOR, and JUSTIN BUSCH, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the Examiner’s decision to reject claims 1, 2, and 4-10, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). Claim 3 is cancelled. We affirm. 1 Appellants identify the real party of interest as Deb IP Ltd. App. Br. 2. “Deb IP Ltd. is owned by Deb Holdings Ltd. which is wholly owned by S. C. Johnson & Son, Inc. through a series of wholly owned intermediaries.” Id. DebMed USA LLC is an Applicant for the instant patent application. See Bib Data Sheet. Appeal 2017-008680 Application 14/185,568 STATEMENT OF THE CASE Appellants’ disclosed invention relates to “an electronic hand hygiene event monitoring system.” Spec. ^ 9. Claim 1, which is illustrative, reads as follows: 1. An electronic hand hygiene event monitoring system comprising: a point-of-care dispenser movable between predetermined zones of interest, actuation of the point-of-care dispenser resulting in an RF transmission event at a first power level having a transmission range generally limited to the predetermined zone of interest in which the point-of-care dispenser has been actuated; and a plurality of RF transceivers disposed in each of the predetermined zones of interest, wherein each RF transceiver is configured to receive the RF transmission events from a point- of-care dispenser in the respective predetermined zone of interest, and to transmit a further RF signal at a second power level having a transmission range extending beyond the pre determined zone of interest; wherein at least one of the plurality of RF transceivers is a fixed point of care dispenser disposed within a respective predetermined zone of interest. Claims 1, 2, and 4-10 stand rejected under 35 U.S.C. § 112(b),2 as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. See Final Act. 2-3. 2 All rejections are under the provisions of 35 U.S.C. in effect after the effective date of the Feahy-Smith America Invents Act of 2011 (AIA). See, e.g., Final Act 2. 2 Appeal 2017-008680 Application 14/185,568 Claims 1, 2, 4, 5, 9, and 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over Iseri et al. (US 2013/0262034 Al; Oct. 3, 2013). See Final Act. 4-8. Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable over Iseri and Seyed Momen et al. (US 2010/0117836 Al; May 13,2010). See Final Act. 8. Claims 7 and 8 stand rejected under 35 U.S.C. § 103 as being unpatentable over Iseri and Huang et al. (US 2009/0195385 Al; Aug. 6, 2009). See Final Act. 8-9. Rather than repeat the arguments here, we refer to the Briefs (“App Br.” filed Nov. 16, 2016; “Reply Br.” filed May 23, 2017) and the Specification (“Spec.” filed Feb. 20, 2014) for the positions of Appellants and the Final Office Action (“Final Act.” mailed May 16, 2016), and Examiner’s Answer (“Ans.” mailed Mar. 23, 2017) for the reasoning, findings, and conclusions of the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). 3 Appeal 2017-008680 Application 14/185,568 ISSUES The issues presented by Appellants’ arguments are as follows: Does the Examiner err in finding the phrase “a transmission range generally limited to the predetermined zone of interest,” as recited in claim 1, renders claim 1 indefinite under § 112(b)?3 Does the Examiner err in finding Iseri teaches “at least one of the plurality of RF transceivers is a fixed point of care dispenser disposed within a respective predetermined zone of interest” (hereinafter the “disputed limitation”), as recited in claim 1? ANALYSIS Rejection under 35 U.S.C. § 112(b) The Examiner finds claim 1 is indefinite because “the range ‘generally limited to a predetermined zone of interest’ is . . . based on the shape and/or material of the zone which may greatly vary by the user who is interested.” Final Act. 3. The Examiner further explains that one of the ordinary skill cannot ascertain the scope of an arbitrary person’s interest zone to compare with the transmission range for determining “generally limited” or not. ... A zone of interest may greatly vary by the user who is interested. One of ordinary skill in the art does not understand or ascertain the boundary of an area of someone’s “interest” for such comparison. Ans. 4 (emphasis in original). 3 Appellants’ arguments present additional issues under § 112(b). However, because the identified issue is dispositive of the appeal under § 112(b), we do not reach the additional issues under § 112(b). 4 Appeal 2017-008680 Application 14/185,568 “It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter.” Manual of Patent Examining Procedure (MPEP) §2173 (9th ed. Rev. 07.2015, Nov. 2015). Language in a claim is unclear if it is “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention . . . ,” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014), or if it is “is amenable to two or more plausible claim constructions . . . ,” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); see also Ex parte McAward, Appeal No. 2015- 006416, 2017 WL 3669566 (PTAB 2017) (precedential) (discussing the test for indefmiteness during prosecution and affirming Miyazaki's continued precedential status (at *2, n.3)). However, “[t]he requirement, applied to the real world of modem technology, does not contemplate in every case a verbal precision of the kind found in mathematics.” Packard, 751 F.3d at 1313. Furthermore “[bjreadth of a claim is not to be equated with indefmiteness.” MPEP § 2173.04, citing In re Miller, 441 F.2d 689, 693 (CCPA 1971). We agree with Appellants for the reasons set forth in the Briefs (App. Br. 8-12; Reply Br. 3^1). According to Appellants, the Specification describes two embodiments—one being a dispenser’s transmission within one predetermined zone of interest not received by another zone of interest’s transceiver, the other being the dispenser’s transmission received by the another zone of interest’s transceiver. App. Br. 10-11 (citing Spec. ^ 22). Accordingly, in light of the Specification’s description, a person of ordinary skill in the art would understand with reasonable certainty the scope of the dispenser’s transmission as being “generally limited” because “neither 5 Appeal 2017-008680 Application 14/185,568 embodiment literally requires the transmission range to be limited to a predetermined zone of interest.” Id. at 11; See Packard, 751 F. 3d at 1313. Further, the term “predetermined zone of interest” “would be understood by one of skill in the art, in view of the specification, to refer to a region or area within which hand hygiene is desired to be monitored. That zone is not unknown or unascertainable, but rather is selected, or ‘predetermined.’” Reply Br. 4 (citing Spec. 5, 6, 21-25, 28, 30). Because the term “predetermine” is not defined in the Specification, we interpret the term with its plain meaning, namely “to determine beforehand.” Merriam-Webster’s Collegiate Dictionary 917 (10th ed. 1993). Thus, even assuming a zone of interest may vary greatly among users, that is a question of breadth rather than definiteness. See Miller, 441 F,2d at 693. The zone of interest is still determined beforehand, and we conclude the term “predetermined zone of interest” is not vague or unclear and informs, with reasonable certainty, persons of ordinary skill in the art about the scope of the claim. See Packard, 751 F.3d at 1311. Accordingly, we do not sustain the § 112(b) rejection of independent claim 1, and claims 2 and 4-10, which depend, directly or indirectly, from claim 1, and were not separately argued with particularity (see App. Br. 16). Rejections under 35 U.S.C. § 103 The Examiner finds Iseri teaches or suggests claim 1. Final Act. 4-6; Ans. 3-7. In particular, the Examiner maps the recited “point-of-care dispensers” to Iseri’s dispensers 205A-D (Final Act. 4-5 (citing Iseri 30, 50-52, 64; Fig. 2A)); the recited “RF transceivers” to Iseri’s location- specific hubs 220 (Final Act. 5 (citing Iseri 50-51; Fig. 2A); Ans. 5); and 6 Appeal 2017-008680 Application 14/185,568 the recited “predetermined zones of interest” to Iseri’s hospital rooms 260, 270 (Final Act. 5 (citing Iseri ^ 51; Fig. 2A). Although the Examiner further finds Iseri does not explicitly disclose the disputed limitation, the Examiner finds Iseri teaches a stationary dispenser. Final Act. 5 (citing Iseri 64); Ans. 6. The Examiner concludes [o]ne of the ordinary skill in the art understands that the integration of the fixed dispenser and the fixed hub will save the cost and the space and will still function the same two functions of dispenser function and hub/RF transceiver function. Therefore, it would have been obvious to one of ordinary skill at the time of first filing of the claimed invention to integrate of the fixed dispenser and the fixed hub i.e. the RF transceiver. Ans. 6. Appellants assert Iseri’s movable dispenser includes an electronic module that communicates with a location-specific hub or network server (App. Br. 14 (citing Iseri 30, 32, 37, 38; Figs. 2A-2B); Reply Br. 4-5), but argue Iseri’s stationary dispenser does not include the electronic module that communicates with the hub or network server, and does not perform the functions of the electronic module (App. Br. 14-15 (citing Iseri 64); Reply Br. 5). According to Appellants, “[t]he only features that [Iseri’s stationary dispenser and hub] have in common are that they are both stationary and that they are both in the same area. That is not articulated reasoning for combining them that is based on rational factual underpinning.” Reply Br. 6. We are not persuaded of error. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), especially if the combination would not be “uniquely challenging or difficult for one of 7 Appeal 2017-008680 Application 14/185,568 ordinary skill in the art,” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the answer depends on “whether the improvement is more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417 (citing Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969); Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976)). Iseri is generally directed to a hand hygiene tracking system in a medical environment such as a hospital. Iseri, Title; 10, 29; Fig. 2A. Iseri’s hospital rooms each include personal hand-sanitizer dispensers including electronic modules, and a location-specific hub. Id. ^ 30; Fig. 2A. Appellants attempt to support their contention by arguing Iseri’s stationary dispensers are limited to only those that do not include an electronic module. App. Br. 14-15 (citing Iseri 64); Reply Br. 5. But Iseri, by disclosing that a dispenser including an electronic module “may be carried” (Iseri 30 (emphasis added)), at least suggests that the dispenser including the electronic module also may be stationary. Contrary to Appellants’ contention (Reply Br. 6), the common features between Iseri’s suggested stationary dispenser and location-specific hub include (1) being stationary and in the hospital room (see Iseri Fig. 2A); (2) a memory, processor, and transceiver (see id. Fig. 2B); (3) and being configured to communicate with a network server (see id. 30, 32). A device that combines Iseri’s suggested stationary dispenser and location- specific hub in a hospital room does no more than the two devices do separately in the hospital room. The device performs the same function 8 Appeal 2017-008680 Application 14/185,568 when combined as it does in the prior art. See Sakraida, 425 U.S. at 282; Anderson’s-Black Rock, 396 U.S. at 90. Moreover, “the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” MPEP § 2144.04 (quoting In re Larson, 340 F.2d 965, 968 (CCPA 1965)). Thus, one of ordinary skill in the art would have been able to integrate the suggested stationary dispenser with the location-specific hub in the same room using methods known in the art at the time the invention was made. See Leapfrog Enters., 485 F.3d at 1162. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR, 550 U.S. at 417. Thus, Appellants do not persuade us of error in the rejection under § 103 of claim 1. Accordingly, we sustain the rejections under § 103 of claim 1, and claims 2 and 4-10, which variously depend, directly or indirectly, from claim 1, and were not separately argued with particularity (see App. Br. 16). DECISION The decision of the Examiner to reject claims 1, 2, and 4-10 under 35 U.S.C. § 112(b) is reversed. The decision of the Examiner to reject claims 1, 2, and 4-10 under 35 U.S.C. § 103 is affirmed. Because we affirm the rejection of every appealed claim on at least one ground of rejection, the rejection of claims 1, 2, and 4-10 is affirmed. See 37 C.F.R. § 41.50(a)(1). 9 Appeal 2017-008680 Application 14/185,568 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). See 37 C.F.R. §§ 41.50(f), 41.52(b). AFFIRMED 10 Copy with citationCopy as parenthetical citation