Ex Parte Mayer et al

Patent Trial and Appeal Board

Feb 27, 2017

13358612 (P.T.A.B. Feb. 27, 2017)

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.
13/358,612 01/26/2012 Felix MAYER 796/83731 2945
23432 7590 02/28/2017
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
FAYYAZ, NASHMIYA SAQIB
ART UNIT PAPER NUMBER
2856
MAIL DATE DELIVERY MODE
02/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FELIX MAYER, MARKUS GRAF, LUKAS BURGI, and
DOMINIC BONI1
Appeal 2015-007974
Application 13/358,612
Technology Center 2800
Before BEVERLY A. FRANKLIN, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision maintaining the rejection under 35 U.S.C. § 103 of claims 1-15 and
17-23. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify Sensirion AG as the real party in interest. Appeal Br. 1.
2 We refer to the Specification filed January 26, 2012 (“Spec.”), the Final
Office Action mailed August 26, 2014 (“Final Act.”), the Appeal Brief filed
February 20, 2015 (“Appeal Br.”), the Examiner’s Answer mailed June 25,
2015 (“Ans.”), and the Reply Brief filed August 24, 2015 (“Reply Br.”).
Appeal 2015-007974
Application 13/358,612
STATEMENT OF THE CASE
The subject matter on appeal of the claims on appeal relates to a
portable electronic device that includes a chemical sensor housed within a
housing having an opening for exposing the chemical sensor to a fluid to be
analyzed. Spec. Abstract. The fluid to be analyzed can comprise a liquid or
a gas. Spec. 1,11. 29-30.
Claim 1—the sole independent claim—is representative.
1. A portable electronic device, comprising
a housing,
a chemical sensor arranged inside the housing, which
chemical sensor is adapted to measure a property of at least one
analyte, and
an opening in the housing for exposing the chemical
sensor to the fluid to be analyzed, wherein said opening is an
opening in the housing also used for arranging a speaker.
Appeal Br. (Claims Appendix) 13.
The Examiner maintains the rejections under 35 U.S.C. § 103 of
claims 1-5, 22, and 23 over Brooke3 in view of Ito,4 of claims 1-6, 8-11,
13-15, and 19-23 over Lee5 in view of Ito, of claims 7 and 12 over Lee in
view of Ito and Webb,6 and of claims 17 and 18 over Lee in view of Ito and
Haveri.7
Appellants argue the rejections grounded on Brooke or Lee, in the
alternative, in view of Ito on the basis of independent claim 1, and rely on
the dependency of claims subject to the further rejections from claim 1.
3 Brooke, US 2005/0053523 Al, published March 10, 2005.
4 Ito et al., US 6,858,182 Bl, issued February 22, 2005.
5 Lee et al., US 2007/0063858 Al, published March 22, 2007.
6 Webb, US 5,963,782, issued October 5, 1999.
7 Haveri, US 2010/0137732 Al, published June 3, 2010.
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Appeal 2015-007974
Application 13/358,612
DISCUSSION
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that a preponderance of the evidence
supports the Examiner’s determination that one of ordinary skill in the art,
armed with the knowledge provided in the applied prior art would have been
led to the subject matter recited in claims 1-15 and 17-23. We sustain the
Examiner’s decision rejecting all pending claims on the basis of the
rejections grounded on Lee in view of Ito, and further references Webb and
Haveri. We add the following, with particular attention to the combination
of Lee in view of Ito as being outcome determinative regarding the pending
claims.
“[T]he Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner’s rejection. See 37
C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365—
66 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make
a prima facie case, it has long been the Board’s practice to require an
Appellant to identify the alleged error in the examiner’s rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency’s
determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
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Appeal 2015-007974
Application 13/358,612
Lee in view of Ito
The Examiner relies on Lee for its disclosure of a portable, wireless
detection module that includes a housing (casing 111 with cover 112), a
chemical sensor (detectors 12), and an opening (apertures 115) in the
housing for exposing the detectors to a fluid to be analyzed. Final Act. 4
(citing Lee 128 et seq, Fig. 1 A).
Conceding that Lee fails to teach providing the opening with a
speaker, the Examiner relies on Ito for its disclosure of a related prior art
device with a breath analyzer where the exhalation taking-in slot 23 may be
used as a part of a mouth piece or speaker, and a provided speaker can make
a warning sound. Final Act. 4 (citing Ito col. 6,11. 50-65, col. 8,11. 8 et seq,
Figs. 4-6).
The Examiner concludes that it would have been obvious at the time
of the invention to have included a speaker with an exhalation taking-in slot
in order to provide a warning sound to alert the user because using the
exhalation taking-in slot for the speaker would obviate the need for
additional openings. Final Act. 4. In other words, the Examiner concludes,
inter alia, that one skilled in the art would have found it obvious to have
used pre-existing openings for exposing detectors for a speaker added to
provide a warning sound rather than to provide an additional opening for the
speaker.
Appellants’ arguments, including those addressing an additional
ground of rejection—Brooke in view of Ito—for a subset of the claims,
focus on whether the statement that “[t]he exhalation taking-in slot 23 may
be used as a part of mouth piece or speaker 19” (Ito col. 6,11. 64-65) suffices
to disclose or teach the use of the speaker opening as an opening for the
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Appeal 2015-007974
Application 13/358,612
sensor. Appeal Br. 5-10; Reply Br. Appellants fail to squarely address,
however, the Examiner’s further determination grounded on the addition of a
speaker to provide a warning sound (Ito col. 8,1. 8 et seq) while using the
already existing opening of Lee in order to obviate the need for any
additional opening (Final Act. 4). Rather, Appellants contend that the
Examiner relies again on Ito as disclosing the feature of an opening in a
speaker without reference to either the cited disclosure in Ito for adding the
cited speaker to provide a warning sound or to the reasoning for combining
the function of the opening for exposing the chemical sensor and for
facilitating the provision of the warning sound. Appeal Br. 9-10. As such,
we are unpersuaded by arguments that do not address the Examiner’s stated
position in this regard.
Appellants belatedly address the teaching of Ito at col. 8,11. 8-11
(Reply Br. 5-6) in arguments we deem waived because the Examiner relied
on this teaching in the Final Office Action (Final Act. 4), and no reason is
provided why response could not have been made in the Appeal Brief (37
C.F.R. § 41.41(b)(2)).8 Further, we discern no sound basis for reversible
error where the proffered argument is grounded on the contended
insufficiency of Ito’s column 6, lines 64-65 (Reply Br. 6), and we find the
Examiner’s rejection sufficiently supported by the articulated, common
sense rationale to combine the speaker providing an alarm sound in the
8 Appellants proffer further arguments variously in support of their preferred
interpretation of Ito’s column 6, lines 64-65 (Reply Br. 3—4) and for Ito
teaching away (Reply Br. 5), which are likewise untimely and deemed
waived to the extent they relate to the rejection grounded on Lee in view of
Ito.
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Application 13/358,612
opening for the sensor disclosed in Lee in order to obviate the need for any
additional opening (Final Act. 4).
We add that while Appellants’ arguments focus on the explicit
teachings of the references, such is not necessary for a proper motivation to
combine the teachings of references. DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)
(“an implicit motivation to combine exists not only when a suggestion may
be gleaned from the prior art as a whole, but when the ‘improvement’ is
technology-independent and the combination of references results in a
product or process that is more desirable.”). Also, as explained by our
reviewing court, even the use of common sense to supply a missing claim
limitation is wholly proper where “the limitation in question [i]s unusually
simple and the technology particularly straightforward.” Arendi S.A.R.L. v.
Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016), petition for cert, filed
Nov. 8, 2016 (No. 16-626) (distinguishing Perfect Web Techs., Inc. v.
InfoUSA Inc., 587 F.3d 1324 (Fed. Cir. 2009)). An obviousness analysis
“may include recourse to logic, judgment, and common sense available to
the person of ordinary skill that do not necessarily require explication in any
reference or expert opinion.” PerfectWeb, 587 F.3d at 1329.
Taking into account the principles above, we are of the opinion that
the Examiner’s reliance on the common sense of one of ordinary skill in the
art to use the same hole in a housing to expose a chemical sensor and to
facilitate provision of a warning sound from an enclosed speaker is wholly
sufficient, and Appellants proffer no persuasive argument to the contrary.9
9 None of the arguments or contentions properly before us, even as to the
rejection over Brooke in view of Ito, provide a basis for the prior art
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Application 13/358,612
For these reasons, we are not persuaded the Examiner erred reversibly
in rejecting claim 1 under § 103 over Lee in view of Ito.
Having relied on the arguments as to claim 1 for the other claims
subject to the rejection over Lee in view of Ito (claims 1-6, 8-11, 13-15,
and 19-23) and on the dependency of claims from independent claim 1 for
claims subject to the rejection over Lee in view of Ito and Webb (claims 7
and 12) and Lee in view of Ito and Havari (claims 17 and 18), we sustain the
decision rejecting all claims on appeal.
Brooke in view of Ito
Because all claims subject to the rejection over Brooke in view of Ito
stand rejected over the sustained rejection over Lee in view of Ito, the
rejection over Brooke in view of Ito is cumulative and we decline to reach
its merits.
DECISION
In view of the reasons set forth above, we affirm the Examiner’s
decision rejecting claims 1-15 and 17-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
teachings reasonably leading the skilled artisan away from the invention. Cf.
DyStar Textilfarben, 464 F.3d at 1364 (“We will not read into a reference a
teaching away from a process where no such language exists.”).
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