Ex Parte Lynn

Board of Patent Appeals and Interferences

Aug 31, 2001

08803624 (B.P.A.I. Aug. 31, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LYNN LYNN
____________
Appeal No. 1999-1590
Application No. 08/803,624
____________
ON BRIEF
____________
Before HAIRSTON, FLEMING, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 20, which are all of the claims
pending in this application.
Appellant's invention relates to a watch for monitoring the
menstrual cycle of a woman. The watch displays various dates
including the start date of the previous month's cycle, the
projected start date of the next month's cycle, the date of
ovulation, and the current date, along with the number of days
since the start of last month's cycle. The information is
automatically updated and stored in a memory. Claim 1 is
illustrative of the claimed invention, and it reads as follows:
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1. A device for monitoring the menstrual cycle of a woman,
said device comprising:
a housing;
memory means for storing associated dates of the woman's
menstrual cycle;
a display disposed on said housing;
display drive means responsive to said memory means for
displaying said associated dates of the woman's menstrual cycle
on said display;
means for automatically updating said associated dates of
the woman's menstrual cycle on the basis of menstrual data stored
in said memory means and the current date; and
means for adjusting said menstrual data so as to reflect the
woman's particular menstrual cycle.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Desjacques 4,367,527 Jan. 04, 1983
Claims 1 through 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Desjacques.
Claims 1 through 20 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being
unpatentable over the claims of U.S. Patent No. 5,606,535.
Reference is made to the Examiner's Answer (Paper No. 14,
mailed January 28, 1999) for the examiner's complete reasoning in
support of the rejections, and to appellant's Brief (Paper Nos.
13 and 15, filed December 21, 1998 and January 15, 1999,
respectively) for appellant's arguments thereagainst.
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Application No. 08/803,624
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OPINION
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellant and the examiner. As a consequence of our review, we
will reverse the obviousness rejection of claims 1 through 20,
and affirm the obviousness-type double patenting rejection of
claims 1 through 20.
Independent claim 1 recites, in pertinent part, means for
displaying "associated dates of the woman's menstrual cycle."
Desjacques, in Figure 9, shows displaying the current date, but
no other dates. Desjacques is concerned with calculating on a
particular day the probability of getting pregnant following an
act of sexual intercourse. Although the calculations require
information about the woman's menstrual cycle, such as the
beginning date of the last cycle and the average length of the
cycle, as pointed out by appellant (Brief, page 6), Desjacques
has no reason to display any information other than the
probability of becoming pregnant.
The examiner asserts (Answer, page 3) that "[i]t would have
been obvious . . . to adapt the reference to include calculating
and displaying differing data related to the menstrual cycle in
order to provide information on the varying dates. . . . What
data is calculated and the relationship to the current date is an
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Application No. 08/803,624
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engineering choice." Appellant asserts (Brief, pages 8-9) that
the examiner's rejection is based on hindsight acquired from
appellant's disclosure. We agree. Without some teaching or
suggestion to display more than the probability of becoming
pregnant, we decline to find that such a display would have been
obvious. The Court has held that "[w]ith respect to core factual
findings in a determination of patentability, however, the Board
cannot simply reach conclusions based on its own understanding or
experience -- or on its assessment of what would be basic
knowledge or common sense." In re Zurko, No. 96-1258 (Fed. Cir.
August 2, 2001). Thus, we cannot sustain the obviousness
rejection of claim 1 nor of its dependents, claims 2 through 15.
Claim 16 recites the specific dates to be displayed -- the
dates of a woman's last and next menstrual cycle. As explained
above, Desjacques has no reason to display any information other
than the probability of becoming pregnant, and the examiner has
provided no teachings or suggestions from the prior art as to why
it would have been obvious to include such a display. Therefore,
we cannot sustain the obviousness rejection of claim 16 nor of
its dependents, claims 17 through 20.
As appellant has not argued the obviousness-type double
patenting rejection, we will sustain the rejection pro forma.
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Application No. 08/803,624
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Therefore, the rejection of claims 1 through 20 for obviousness-
type double patenting is affirmed.
CONCLUSION
The decision of the examiner rejecting claims 1 through 20
under 35 U.S.C. § 103 is reversed. The decision of the examiner
rejecting claims 1 through 20 under obviousness-type double
patenting is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
APG:clm
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Application No. 08/803,624
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