Ex Parte Morehouse et al

Patent Trial and Appeal Board

Feb 25, 2016

12695094 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/695,094 01127/2010 Steve L. Morehouse
26252 7590 02/25/2016
KELLY & KELLEY, LLP
6320 CANOGA A VENUE
SUITE 1650
WOODLAND HILLS, CA 91367
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.
PREDYN-54240 7233
EXAMINER
ISLAM, SYED A
ART UNIT PAPER NUMBER
3636
MAILDATE DELIVERY MODE
02/25/2016 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 STEVE L. MOREHOUSE, KAREN L. JOSEPH,
and MARTINE. SAENZ
Appeal2014-001163
Application 12/695,094
Technology Center 3600
Before LYNNE H. BROWNE, JILL D. HILL and PAUL J. KORNICZKY,
Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants Steve L. Morehouse, et al. appeal under 35 U.S.C. § 134
from a rejection of claims 1-13, 15-31 and 3 3. Claims 14 and 3 2 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION.
Appeal2014-001163
Application 12/695,094
CLAIMED SUBJECT MATTER
The claims are directed to an identification tag with wings. Claims 1,
17, 22, 28, and 31 are independent. The contested limitations are common
to all five independent claims except as noted. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. An identification tag for use on human patients in a medical
facility, comprising:
an identification portion having first and second opposite sides
and first and second opposite ends;
a strap portion extending from the first end of the identification
portion;
a first wing extending from the first side of the identification
portion and a second wing extending from the second side of the
identification portion, wherein each of the first and second wings has
a straight edge opposite the identification portion and wherein the
straight edges are in a facing relationship when the wings are folded
over the identification portion;
the identification portion, strap portion and first and second
wings all made from label stock, paper, polyester, synthetic material
or fabric;
a curved notch forming curved comers where the first and
second wings meet the identification portion; and
a removable cover piece underlying at least a portion of the first
and second wings, and an adhesive layer disposed between said
removable cover piece and the first and second wings.
REFERENCES
In rejecting the claims on appeal, the Examiner relies on the following
prior art:
Wiebe
Krug
Schwartztol et al.
Schintz et al.
Saint et al.
us 4,078,324
us 4,226,036
us 5,381,617
us 6,641,048
US 2006/0236578 Al
2
Mar. 14, 1978
Oct. 7, 1980
Jan. 17, 1995
Nov. 4, 2003
Oct. 26, 2006
Appeal2014-001163
Application 12/695,094
REJECTIONS
1. Claims 1-13 and 15-21 stand rejected under 35 U.S.C § 103(a)
as being unpatentable over Schwartztol, Saint, and Wiebe.
2. Claims 22-24 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Schwartztol, Saint, and Schintz.
3. Claims 25-27 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Schwartztol, Saint, Schintz, and Wiebe.
4. Claim 28-31 and 33 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Saint, Krug, and Schwartztol.
Appellants seek our review of all of the rejections.
OPINION
Rejection 4: Claims 28-31 and 33
Appellants argue claims 28-31and33 as a group. Appeal Br. 21. We
select claim 28 as the representative claim, and claims 29-31 and 33 stand or
fall with claim 28. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Saint discloses all of the limitations of claim
28 except for "a second wing extending from the second opposite side."
Final Act. 15-16. The Examiner further finds that "Krug teaches a
wristband" and that Schwartztol "discloses a second wing 24." Id. at 16.
Based on these findings, the Examiner determines that it would have
been obvious to "use two equal length wings (at half the size of the single
present wing) on each side of the ID portion instead of one wing because it
provides secure bonding with double the wings while performing the similar
function." Id. In addition, the Examiner determines that it would have been
obvious to use the modified system "with the wristband of Krug as it allows
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Application 12/695,094
for the identification label to be handled separately, allowing a nurse or other
orderly to easily move it so that it is readable without having to swivel the
entire band about the wrist or reposition the wrist." Id.
Appellants argue that a "second flap added to Saint would only
overlay the first flap and not add any additional locking function for the tail
portion or otherwise ensure a good fit" and would "add unwanted extra
thickness to the device of Saint." Appeal Br. 22. Appellants' argument is
not responsive to the rejection as articulated by the Examiner. As the
Examiner explains, "[ r ]eplacing the single wing of the Saint [system] with
two equal and half length wings as shown in Schwartztol et al. means the
overall thickness in assembled condition will remain the same." Ans. 4.
Thus, Appellants do not apprise us of error. Id.
Appellants further argue that it would be difficult to align the two
half-size flaps taught by Schwartztol and that misalignment "would increase
the possibility of discomfort or irritation to a human patient wearing the
device." Appeal Br. 23. Noting that "Schwartztol discloses no difficulty
aligning the wings over the strap and clearly discloses it can be easily
secured," the Examiner explains that perfect alignment is not a concern in
Schwartztol "because the straight edges of the wings are in a facing
relationship, not an abutting relationship." Ans. 4. Moreover, Appellants do
not provide evidence or explanation to support their contention that
Schwartztol's flap configuration would cause discomfort or irritation of the
human patient. Thus, Appellants' argument is unconvincing.
In addition, Appellants argue that "Krug fails to disclose any of the
missing teachings that are not found in Schwartztol or Saint." Appeal Br.
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Application 12/695,094
23. As Appellants fail to apprise us of error in the Examiner's findings
regarding either Schwartztol or Saint, Appellants' argument is unconvincing.
For the reasons set forth above, we sustain the Examiner's rejection
of claim 28 under 35 U.S.C. § 103(a) in view of Saint, Schwartztol, and
Krug. Claims 29-31 and 33 fall with claim 28.
Rejection 1 : Claims 1-13 and 15-21
Appellants argue claims 1-13 and 15-21 as a group. App. Br. 14. We
select claim 1 as the representative claim, and claims 2-13 and 15-21 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants do not contest that Saint discloses an identification tag
made from label stock, paper, polyester, synthetic material or fabric (see,
e.g., Saint ,-i,-i 38, 44), comprising an identification portion 26 carrying
identification information, a strap portion 24 extending from a first end of
the identification portion 26, and a first wing 28 extending from a first
opposite side of the identification portion 26. See, e.g., Saint ,-i 40, Figs. 1, 9.
Saint also discloses a removable cover piece 38 underlying the wing 28, and
an adhesive layer 39 disposed between the removable cover piece 38 and the
wing 28. See, e.g., Saint ,-i 43. Appellants also do not contest the
Examiner's findings that Saint discloses "a curved notch forming curved
comers where the wing meets the identification portion." Final Action 3;
see, e.g., Saint ,-i 40, Figs. 1, 9.
Thus, Saint discloses all of the limitations in claim 1 except for two
wings which "are in facing relationship when the wings are folded over the
identification portion." As discussed supra, regarding the rejection of claim
28, Schwartztol describes the use of two wings (at half the size of the single
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Appeal2014-001163
Application 12/695,094
wing 28 in Saint) on each side of the identification portion 26. When folded
over the identification portion, the two wings are in facing relationship, as
recited by claim 1. Thus, in the same way that the combined teachings of
Saint and Schwartztol render obvious all of the limitations of claim 28
except for the wristband, they also render obvious claim 1. 1
In response to the Examiner's final rejection, Appellants argue that
"the Schwartztol reference does not qualify as prior art under 35 U.S.C.
§ 103 because it is not analogous to the invention, as claimed." Appeal Br.
17. The analogous art inquiry has developed as a mechanism to define the
scope and content of prior art properly considered in an obviousness
analysis. "To qualify as prior art for an obviousness analysis, a reference
must qualify as 'analogous art,' i.e., it must satisfy one of the following
conditions: (1) the reference must be from the same field of endeavor; or (2)
the reference must be reasonably pertinent to the particular problem with
which the inventor is involved." K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d
1364, 1375 (Fed. Cir. 2012) (citation omitted). This test for analogous art
requires the Examiner to determine the appropriate field of endeavor by
reference to explanations of the invention's subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention. In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004).
In support of their argument, Appellants state that their identification
systems are "for use on human patients in a medical facility as limited by the
field of use restriction" and, thus, differentiates the claims from the luggage
1 Unlike the Examiner, we do not consider the order in which prior art is
applied in a rejection to be significant. See, e.g., In re Bush, 296 F .2d 491,
496 (CCPA 1961).
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Application 12/695,094
tag used for objects in Schwartztol. Appeal Br. 18. The Specification,
however, repeatedly states that "the present invention relates to
identification systems for identifying a person or object." Spec. iJ 1
(emphasis added); see also iii! 07, 33, 34 (stating "this tag can be used in
many settings, including non-medical settings such as sporting venues,
concerts, and amusement parks"). Thus, the field of endeavor of the instant
invention is not limited to use on human patients in a medical facility.
Rather, the field of endeavor is broad enough to encompass Schwartztol's
luggage tag for identifying an object. Accordingly, Schwartztol qualifies as
analogous art under the first prong of the analogous art test.
Appellants also argue that Schwartztol is not reasonably pertinent to
the problems faced by inventors of the claimed invention. Appellants
contend that "[i]n contrast [to Schwartztol's tag], the claimed invention is
primarily concerned about the comfort of the human wearer and the
reliability with which that human wearer can be identified by the tag, i.e.,
how reliably the tag can be read." Appeal Br. 19. However, Appellants do
not identify where the Specification states that comfort of the human wearer
is a primary concern of the instant invention. Although, the Specification
mentions, for example, the ability of the tag to be "moved to a more
comfortable position for the patient" and that "rounded comers provide
additional comfort" (Spec. iii! 46, 4 7), the Specification does not indicate
that this is the only problem, or even the most significant problem with
which the inventors are concerned. Rather, the problem with which the
inventors were concerned is identification of a person or object. Spec. iJ 1.
The Specification explains that:
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Application 12/695,094
While the tag is described as being looped around a patient's
wristband, it should be noted that the tag may be looped around other
items as well, to provide information about the patient. For example,
the tag may be printed with information and then looped and secured
around a patient's tubing (such an IV tube), equipment near the
patient (such as various vital sign monitors), the patient's bed (such as
a baby's bassinet), or even the patient's clothing (such as around a
loop or drawstring provided in a patient's clothing). The tag can be
looped and secured around any suitable item to assist in identifying
the patient. Additionally, this tag can be used in many settings,
including non-medical settings such as sporting venues, concerts, and
amusement parks .... It is particularly useful for infants and small
children with small wrists, but it is not limited to that usage.
,-i 34 (emphasis added). Like Appellants' claimed device, the Schwartztol
tags may be attached to objects such as tubing, beds, clothing and the other
applications described by the Specification. Like Appellants' claimed
device, one of the problems addressed by the Schwartztol tags is to provide
identifying information about people. Thus, Schwartztol is concerned with
the identification of people and objects. ,,L\ .. ccordingly, Schv;artztol also
qualifies as analogous art under the second prong of the analogous art test.
We sustain the Examiner's rejection of claim 1 under 35 U.S.C.
§ 103(a) in view of Saint, Schwartztol and Krug. Claims 2-13 and 15-21
fall with claim 1. Because we rely on different reasoning than the Examiner,
and to ensure that Appellants are provided a fair opportunity to respond, we
designate our affirmance of the obviousness rejection of claims 1-13 and
15-21 as a NEW GROUND OF REJECTION pursuant to 37C.F.R. §
41.50(b).
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Appeal2014-001163
Application 12/695,094
Rejections 2 and 3: Claims 22-24 and 25-27
In response to the rejections relating to claims 22-27, Appellants
advance the same arguments regarding Schwartztol and Saint as those
advanced for Rejection 1 above. Appeal Br. 20-21 and 24-25. For the
reasons discussed above, Appellants' arguments regarding Schwartztol and
Saint are not persuasive.
In addition, Appellants argue that Schintz and Weibe fail to disclose
the missing teachings that are not found in Schwartztol or Saint. Appeal Br.
21, 24. As Appellants fail to apprise us of error in the findings regarding
either Schwartztol or Saint, Appellants' arguments are unconvincing.
We sustain the Examiner's rejection of claims 22-24 under 35 U.S.C.
§ 103(a) in view of Saint, Schwartztol, and Krug, and of claims 25-27 under
35 U.S.C §103(a) in view of Saint, Schwartztol, Schintz, and Wiebe, and
designate our affirmance of the obviousness rejection of claims 22-27 as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
DECISION
We AFFIRM the Examiner's rejection of Claims 28-31 and 33 under
35 U.S.C § 103(a) as obvious over Saint, Krug, and Schwartztol.
We AFFIRM the Examiner's rejection of Claims 1-13 and 15-21
under 35 U.S.C § 103(a) as obvious over Schwartztol, Saint, and Wiebe, and
we designate our affirmance as a NEW GROUND OF REJECTION
pursuant to 37C.F.R. § 41.50(b).
We AFFIRM the Examiner's rejection of Claims 22-24 under
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Application 12/695,094
35 U.S.C § 103(a) as obvious over Schwartztol, Saint, and Schintz, and we
designate our affirmance as a NEW GROUND OF REJECTION pursuant to
37C.F.R. § 41.50(b).
We AFFIRM the Examiner's rejection of Claims 25-27 under
35 U.S.C § 103(a) as obvious over Schwartztol, Saint, Schintz, and Wiebe,
and we designate our affirmance as a NEW GROUND OF REJECTION
pursuant to 37C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv) (2009).
AFFIRMED; 37 C.F.R. § 41.50(b)
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