Ex Parte Slater et al

Patent Trial and Appeal Board

Sep 6, 2018

14996675 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/996,675 01/15/2016
28997 7590 09/10/2018
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Kristin Blume Slater
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.
17032-000002-US-COA 1479
EXAMINER
YOUNG, PATRICIA I
ART UNIT PAPER NUMBER
2488
NOTIFICATION DATE DELIVERY MODE
09/10/2018 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):
stldocket@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISTIN BLUME SLATER and FRED S. WOLFLINK1
Appeal2018-002482
Application 14/996,675
Technology Center 2400
Before BRUCE R. WINSOR, NABEEL U. KHAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 14--2 7, all the pending claims in the present application. 2 See
Appeal Br. 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants name Kristin Blume Slater as the real party in interest. See
Appeal Br. 2.
2 Claims 1-13 are cancelled. See Appeal Br. 16.
Appeal2018-002482
Application 14/996,675
STATEMENT OF THE CASE
Invention
Appellants indicate their invention relates to "taking pictures or
videos triggered by pre-selected changes in a user's biorhythms."
Spec.i-f 15. 3
Exemplary Claims
Claims 14, 24, and 27 are independent claims. Claim 14 is exemplary
and is reproduced below:
14. An apparatus for taking pictures or videos
triggered by pre-selected changes in a user's biorhythms, the
apparatus comprising:
a camera for taking one or more pictures and/or videos;
and
at least one processor configured to receive a biorhythm
signal indicative of at least one detected biorhythm of a user,
the processor configured to compare the biorhythm signal to a
biorhythm threshold and, in response to the biorhythm signal
exceeding the biorhythm threshold, to simultaneously trigger
the camera to take one or more pictures or videos.
REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Amano et al. ("Amano") us 6,095,984 Aug. 1, 2000
3 This Decision refers to: ( 1) Appellants' Specification ("Spec.")
filed January 15, 2016; (2) the Final Office Action ("Final Act.") mailed
January 31, 2017; (3) the Appeal Brief ("Appeal Br.") filed September 20,
2017; (4) the Examiner's Answer ("Ans.") mailed November 3, 2017; and
(5) the Reply Brief ("Reply Br.") filed January 2, 2018.
2
Appeal2018-002482
Application 14/996,675
Ryou
Hughes
US 7,280,041 B2
Haddick et al. ("Haddick")
US 2008/0204555 Al
US 2012/0249797 Al
REJECTIONS
Oct. 9, 2007
Aug. 28, 2008
Oct. 4, 2012
Claims 14--20 and 23-27 stand rejected under 35 U.S.C. § 103 (a) as
being unpatentable over the combination of Ryou, Amano, and Hughes.
Final Act. 6-13.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over the combination of Ryou, Amano, Hughes, and Haddick.
Final Act. 13-15.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
Manual of Patent Examining Procedures (MPEP) § 1205.02; 37 C.F.R.
§§ 4I.37(c)(l)(iv), 4I.39(a)(l).
ANALYSIS
Rejections under§ 103 (a) of Claims 14-27
Issue: Does the Examiner err in rejecting claim 14 under 35 U.S.C.
§ 103 (a) as unpatentable over the combination of Ryou, Amano, and
Hughes?
We refer to, rely on, and adopt the Examiner's findings and
conclusions, insofar as they relate to issues raised in this appeal, as set forth
in the Office Action and Answer. See Final Act; 2-9; Ans. 9-11. Our
discussion here will be limited to the following points of emphasis.
3
Appeal2018-002482
Application 14/996,675
The Examiner's rejection of independent claim 14 relies on a
combination of teachings from Ryou, Amano, and Hughes. See Final
Act. 6-9; Ans. 9-11. Ryou teaches a cellular phone with bio-sensors that
collects bio-information of the cell phone, generates feeling data based on
the bio-information, and transmits the generated feeling data with a
communication signal. See Ryou Abstract. Amano teaches a device such as
a watch that includes an arrhythmia detecting apparatus that detects when an
arrhythmia exceeds a threshold. See Amano Abstract, Figs. 2, 3. The
detection "event serves as a trigger causing the arrhythmia detecting
apparatus to immediately request that communications be initiated." Amano
26:38--48. Hughes teaches a "video recording device" that "records
automatically when a triggering event," such as vibration, occurs. Hughes
,r 38; see Hughes ,r 31, Fig. 1.
Appellants dispute the Examiner's factual findings with respect to
Ryou, Amano, and Hughes. In particular, Appellants summarize each of the
references and argue that "none of the cited references disclose a camera that
is triggered to take pictures or videos based on a user's biorhythms." Appeal
Br. 5 ( emphasis removed); see Appeal Br. 5-9.
We are unpersuaded because Appellants' arguments unpersuasively
attack the Examiner's findings from Ryou, Amano, and Hughes individually
(see Appeal Br. 6-9) when the rejection is based on the teachings of the
combination of references. See In re Merck & Co., Inc., 800 F .2d 1091,
1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references") ( citation omitted). Appellants' arguments fail
4
Appeal2018-002482
Application 14/996,675
to take into account what the collective teachings of Ryou, Amano, and
Hughes would have suggested to one of ordinary skill in the art.
Appellants next argue the Examiner's asserted motivation to combine
Ryou and Amano is insufficient "because Amano's benefit is unrelated and
inapplicable to Ryou's cellular phone communication system." Appeal
Br. 9.
We are unpersuaded of Examiner error. The Examiner determines it
would have been obvious to one of skill in the art at the time of the invention
to modify Ryou's mobile terminal to incorporate Amano's "processor
configured to compare the biorhythm signal to a biorhythm threshold,
biorhythm signal exceeds the biorhythm threshold, and triggered by pre-
selected changes ... for the benefit of a portable arrhythmia detecting device
to accurately detect arrhythmia during the course of normal daily activities."
Final Act. 8. We find Appellants' argument that "Amano's benefit is
unrelated and inapplicable to Ryou's cellular phone" (Appeal Br. 9)
unpersuasive. Because a cellular phone is both portable and used frequently
throughout the day by its owner, we agree the Examiner's combination
would have provided the "benefit of a portable arrhythmia detecting device
to accurately detect arrhythmia during the course of normal daily activities."
Final Act. 8 ( emphasis added). Moreover, the combination would allow the
triggering and transmission of an alert signal by the cellular phone in the
event of an arrhythmia.
Appellants further argue the Examiner's asserted motivation to
combine Ryou and Amano with Hughes is insufficient because the Examiner
"does not explain how Hughes' vehicle surveillance system would improve
heart arrythmia detection." Appeal Br. 10 ( emphases removed).
5
Appeal2018-002482
Application 14/996,675
We are unpersuaded of Examiner error. The Examiner determines it
would have been obvious to one of skill in the art at the time of the invention
to modify R you and Amano to "incorporate a camera for taking one or more
pictures and/or videos, and to simultaneously trigger the camera to take one
or more pictures or videos, as taught by Hughes, for the benefit of picking
up changes in the state of health of a patient." Final Act. 8-9 (emphasis
removed).
We find Appellants' argument that "it is not clear what benefit a
photo/video of a patient experiencing a heart arrhythmia would provide"
unpersuasive because we agree with the Examiner's stated motivation to
combine the references. The proposed combination would allow the
triggering and transmission of an alert signal in the event of an arrhythmia
and would simultaneously trigger a camera to take video of the user in a
vehicle, e.g., to determine if the user is unconscious or in distress due to a
heart event.
Appellants argue the Examiner's reasoning is based on impermissible
hindsight reasoning. Appeal Br. 12-13. We are not persuaded. Rather than
using hindsight, the Examiner points to specific disclosures in the prior art
that describe each of the limitations of Appellants' claim 14. See Final
Act. 6-9. The Examiner also articulates reasons having rational
underpinnings for each of the proposed combinations. See Final Act. 8-9.
We therefore find that the Examiner's obviousness rejection is based on
sufficiently articulated reasoning that is rational and supported by evidence
drawn from the record. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007) (the conclusion of obviousness can be based on the interrelated
teachings of multiple patents.).
6
Appeal2018-002482
Application 14/996,675
Moreover, Appellants fail to provide evidence sufficient to
demonstrate that the cited combination does not merely involve the
predictable use of prior art elements according to their established functions.
"The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results," KSR, 550
U.S. at 416, especially if the combination would not be "uniquely
challenging or difficult for one of 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).
Appellants further argue "the asserted combination would render
Hughes vehicle surveillance cameras unsatisfactory for their intended
purpose" because "[u]sing Hughes' vehicle surveillance cameras to in
Amano's heart arrhythmia detector would prevent Hughes' cameras from
monitoring/recording vehicles" and "Hughes' cameras would not be able to
trigger video recording based on vehicle impact events, and would therefore
not be able to solve Hughes' stated problem of providing vehicle
surveillance while a user is away from their vehicle." Appeal Br. 13 (citing
In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)).
Appellants' argument is premised on a "physical" or "bodily"
incorporation of limitations of one reference into the other. However, this is
not the standard. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
("[I]t is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review."). The relevant
inquiry is whether the claimed subject matter would have been obvious to
those of ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413,425 (Fed. Cir. 1981).
7
Appeal2018-002482
Application 14/996,675
"Combining the teachings of references does not involve an ability to
combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA
1973). Rather than express obviousness as the physical incorporation of a
structure from one reference into the structure of another reference, the prior
art should be viewed as a combination of teachings from different sources,
and the use of those teachings by one of ordinary skill in the art. Thus, we
find Appellants' argument unpersuasive because the rejection does not
require physically incorporating Hughes' cameras within Amano' s
arrhythmia detector. Instead, the Examiner rejects the claim as unpatentable
over the combined teachings of the references.
Accordingly, we determine the Examiner has provided sufficient
motivation for modifying Ryou based on the teachings of Amano and
Hughes, without resorting to impermissible hindsight reasoning.
We, therefore, sustain the Examiner's 35 U.S.C. § 103 (a) rejection of
claim 14. We also sustain, for similar reasons, the Examiner's§ 103 (a)
rejection of independent claims 24 and 27, which are argued with
independent claim 14. See Appeal Br. 5, 13. Dependent claims 15-23, 25,
and 26 are not argued separately and fall with their respective independent
claims. See Appeal Br. 13-14.
DECISION
We affirm the Examiner's§ 103 (a) rejections of claims 14--27.
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
8