Ex Parte SONG et alDownload PDFPatent Trial and Appeal BoardAug 28, 201813913707 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/913,707 06/10/2013 32894 7590 08/30/2018 HOYNG ROKH MONEGIER LLP Rembrandt Tower 31st Floor Amstelplein 1 Amsterdam, 1096 HA NETHERLANDS FIRST NAMED INVENTOR Xiangyu SONG 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. 04132.0256.USPO 1072 EXAMINER HUSON, JOSHUA DANIEL ART UNIT PAPER NUMBER 3642 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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): amdocketing@hoyngrokh.com ronny.amirsehhi@hoyngrokh.com david.owen@hoyngrokh.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIANGYU SONG, PIETER NEEL US KOOL, ADOLF JAN VAN DER KAMP, and PATRICK PHILIP JACOB VAN DER TOL Appeal2017-008376 Application 13/913,707 Technology Center 3600 Before WILLIAM V. SAINDON, RICHARD H. MARSCHALL, and SEAN P. O'HANLON, Administrative Patent Judges. MARSCHALL, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 17-23.2 We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 The Appellant is the Applicant, Lely Patent, N.V., which the Appeal Brief identifies as the real party in interest. Appeal Br. 2. 2 Claims 1-16 are withdrawn. Id. Appeal2017-008376 Application 13/913,707 THE CLAIMED SUBJECT MATTER Appellant's claimed subject matter "relates to a system and method for monitoring activity of an animal." Spec. ,r 2. Claim 17 is the only independent claim and is reproduced below. 1 7. An animal activity monitoring system for monitoring animal activity in a housing system for housing freely moving animals, comprising the plurality of animal ID stations arranged in said housing system, and a control device, wherein the monitoring system is configured to perform the steps of: a) recording a first visit of the animal at a first of the animal ID stations; b) recording a subsequent second visit of the animal at a second of the animal ID stations; c) determining a first distance between the first animal ID station at the first visit and the second animal ID station at the second visit, and d) determining a distance covered by the animal on the basis of the first distance. Appeal Br. 18 (Claims App.). THE REJECTION Appellant seeks review of the Examiner's rejection of claims 17-23 under 35 U.S.C. § I02(e) as anticipated by O'Hare (WO 2010/066429 Al, pub. June 17, 2010). 3 3 For convenience, the Examiner and Appellant cite to the National Stage Entry of O'Hare, U.S. Pub. No. 2011/0298619 (pub. Dec. 8, 2011), and we will do the same in this Decision. Final Act. 2; Appeal Br. 8 (citing to paragraph numbers in U.S. publication). 2 Appeal2017-008376 Application 13/913,707 ANALYSIS Step ( c) of claim 1 7 requires measuring a first distance between animal ID stations, and step ( d) requires determining a distance covered by the animal based on the first distance determined in step ( c ). Appeal Br. 18 (Claims App.). The Examiner construed the claimed phrase "configured to perform the steps" in claim 17 as requiring a capability to perform the listed steps of claim 17, concluding that "configured to" "is not a positive limitation but only requires the ability to so perform," and "does not constitute a limitation in any patentable sense." Ans. 3 (emphasis omitted) ( citing Ex parte Mas ham, 2 USPQ2d 164 7 (BP AI 1987); In re Hutchinson, 154 F.2d 135, 138 (CCPA 1946)). In the Final Office Action, the Examiner cited O'Hare's paragraph 24 as disclosing step ( c) and noted O'Hare's animal "tracking" as disclosing step ( d). Final Act. 3. In the Answer, the Examiner found that O'Hare discloses step ( c) by disclosing a system that produces a three-dimensional model of the animal's environment for tracking and recording animals throughout a housing. Ans. 11 ( citing O'Hare ,r 59). The Examiner further found that O'Hare's 3-D model includes "the location of all key fixed features located within the environment" and devices that track the animal's presence and position at various locations. Id. The Examiner made similar findings when finding that O'Hare discloses step (d). Id. Appellant argues that the Examiner erred in construing "configured to" as requiring only a mere capability to perform the claimed functions. Appeal Br. 13-14. According to Appellant, under controlling case law, mere capability is not enough. Id. at 14 ( citing In re Giannelli, 739 F .3d 1375, 1379 (Fed. Cir. 2014)). Appellant argues that claim 17's monitoring 3 Appeal2017-008376 Application 13/913,707 system is designed to perform the steps outlined in claim 1 7 and that 0 'Hare's monitoring system "is completely silent about these steps and is intended for a different purpose and is configured to perform a different task." Id. With respect to step ( c ), Appellant contends that the portions of 0 'Hare cited by the Examiner merely determine a position of an animal within a zone with respect to a fixed datum, which is not the same as determining a first distance between animal ID stations based on two visits to the stations. Id. at 11-12. Appellant also argues that O'Hare cannot disclose step ( d) without determining the first distance as required by step (c). Id. at 13. We agree with Appellant that the Examiner has not supported adequately the finding that O'Hare discloses steps ( c) and ( d) of claim 17. We begin by construing the phrase "configured to" in claim 17, which is part of the transitional phrase introducing the functional steps (a}-( d) of claim 17. The Federal Circuit's interpretation of similar language in Giannelli provides guidance here. In Giannelli, the claim required a "first handle portion adapted to be moved from a first position to a second position by a pulling force." Giannelli, 739 F.3d at 1379 (emphasis added). The Board "noted that the recitation of a new intended use for an old product did not make a claim to that old product patentable," and focused on whether the prior art was "capable of' performing the "adapted to" function. Id. The Federal Circuit reversed, holding that the Board erred in focusing on the "new intended use of the prior art apparatus" inquiry to conclude that "mere capability" of the prior art to perform the claimed function was sufficient to satisfy the claim limitation. Id. at 1380. The Federal Circuit did not construe the "adapted to" limitation as mere intended use that cannot 4 Appeal2017-008376 Application 13/913,707 differentiate the claim from the prior art, and instead construed the "adapted to" language as meaning "made to, designed to, or configured to." Id. ( quotation omitted). In doing so, the Federal Circuit treated "configured to" as requiring more than "mere capability" and synonymous with "made to" and "designed to." See id. Similarly, in Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed. Cir. 2012), the court considered whether "adapted to" means "capable of'/"suitable for," or whether the narrower "made to, designed to, or configured to" construction applied. Id. ( quotation omitted). The court reasoned that "the phrase 'adapted to' is most naturally understood to mean that" the claimed structures "are designed or configured to accomplish the specified objective, not simply that they can be made to serve that purpose." Id. ( emphasis added). The court also viewed the specification as suggesting that the structures "are meant" to perform the claimed function, "not simply that they are capable of doing so." Id. Although Aspex Eyeware, like Giannelli, construed "adapted to" rather than "configured to," the Federal Circuit again treated "configured to" as carrying the narrower meaning than the "capable of' construction. See id.; see also In re Man Mach. Interface Techs. LLC, 882 F.3d 1282, 1286 (Fed. Cir. 2016) ( construing "adapted to be held by the human hand" to mean "designed or made to be held by the human hand"); In re Chudik, 851 F .3d 1365, 1373 n.3 (Fed. Cir. 2017) (construing "arranged to" as "analogous to 'adapted to,' which means 'made to,' designed to,' or 'configured to."' (quoting Man Mach. Interface, 822 F.3d at 1286)). The cases discussed above all construed the pertinent terms in the narrower sense to require more than a mere capability to perform claimed 5 Appeal2017-008376 Application 13/913,707 functions. We see no reason to depart from that approach here, where the claim language requires structure "configured to" perform certain steps and the specification explains how the claimed structure is made to or designed to perform those steps. 4 For example, the specification describes a system that employs various animal ID stations throughout an animal stable. Spec. ,r 30, Figs. 1, 2. The system tracks animal movement from one station to the next, noting the order of the visits to each station so that a distance between two consecutive stations can be measured. Id. ,r,r 39--41. In that sense, the specification discloses a system "designed to" or "made to" perform the claimed steps. We therefore construe "configured to" to mean "designed to" or "made to." In the context of step ( c ), for example, the claim then requires a system designed or made to determine "a first distance between the first animal ID station at the first visit and the second animal ID station at the second visit." The Examiner's findings regarding O'Hare's disclosure of step (c), and related step ( d), do not establish that O'Hare discloses a system designed or made to perform the claimed steps. Final Act. 3; Ans. 10-11. In fact, the cited portions of O'Hare do not mention determining distances between 4 The cases cited by the Examiner in support of the "capable of' approach do not employ the same claim language at issue here, and instead address different language appearing primarily in the preambles of the claims at issue. See Ans. 3; Masham, 2 USPQ2d at 1647 (addressing "apparatus for mixing" in preamble and "completely submerged" in body of claim); Hutchinson, 154 F.2d at 138 (addressing "adapted for use" in preamble). We view the Federal Circuit cases discussed above as more directly on point than these cases. See also MPEP ,r 2111. 04(I) ( discussing Giannelli in the context of a non-exhaustive list of claim language "that may raise a question as to the limiting effect of the language in a claim"). 6 Appeal2017-008376 Application 13/913,707 animal ID stations at all. At most, with respect to determining distances, 0 'Hare describes determining distances between datum points and tags on the animals. O'Hare ,r,r 6, 24. The portions of O'Hare cited by the Examiner, paragraphs 24 and 59, do not mention determining any other distance, and it does not appear, based on the Examiner's findings, that 0 'Hare's system was designed or made to perform this function. See 0 'Hare ,r,r 24 ( describing means for determining position and orientation of animal tag within the system in relation to fixed datum), 59 ( describing three-dimensional model of animal's environment, including key fixed features). Based on the cited portions of O'Hare, it appears that O'Hare discloses a system designed to track the position and speed of the animals within a three-dimensional space, which is not the same as determining a distance between animal ID stations and determining a distance an animal covered based on the distance between ID stations. See id. Based on the foregoing, we do not sustain the rejection of independent claim 17 as anticipated by O'Hare, or claims 18-23 that ultimately depend from independent claim 17. Appeal Br. 18 (Claims App.). DECISION We reverse the decision of the Examiner to reject claims 17-23 under 35 U.S.C. § 102(e). REVERSED 7 Copy with citationCopy as parenthetical citation