Ex Parte Touchton et al

Patent Trial and Appeal Board

Jun 7, 2016

12957024 (P.T.A.B. Jun. 7, 2016)

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.
12/957,024 11/30/2010 Scott F. Touchton 4524-P05171USO0 /DRP 1400
110 7590 06/07/2016
DANN, DORFMAN, HERRELL & SKILLMAN
1601 MARKET STREET
SUITE 2400
PHILADELPHIA, PA 19103-2307
EXAMINER
BENEDIK, JUSTIN M
ART UNIT PAPER NUMBER
3647
MAIL DATE DELIVERY MODE
06/07/2016 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 SCOTT F. TOUCHTON, JAMES T. DEERY, and
BLAINE BACHER
________________

Appeal 2014-004376
Application 12/957,024
Technology Center 3600
________________

Before MICHAEL L. HOELTER, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s Final rejection of claims 1–26. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to an animal training system and
method and, more particularly, to an electronic animal training system and
method that provides a control stimulus to an animal.” Spec. ¶ 1. Claims 1
and 18 are independent. Claim 1, reproduced below, is illustrative of the
claims on appeal:
1. An electronic animal training system comprising:
a remote user transmitter for a user for transmitting a
remote animal control signal;
a remote animal transceiver for placement at the animal
for receiving the remote animal control signal and for effecting
a control stimulus to the animal, wherein the remote animal
transceiver is configured to be in signal communication with a
separate animal control receiver for placement at the animal to
effect a control stimulus to the animal; and wherein the remote
animal transceiver is configured so that in response to a selected
remote animal control signal from the remote user transmitter,
the remote animal transceiver communicates to the animal
control receiver to provide a control stimulus to the animal; and
wherein the remote animal transceiver is configured so that in
response to a different selected remote animal control signal
from the remote user transmitter, the remote animal transceiver
provides a control stimulus to the animal.
REFERENCES RELIED ON BY THE EXAMINER
Vinci US 5,046,453 Sept. 10, 1991
Lee US 6,415,742 B1 July 9, 2002

“Official Notice that it is old and well known in the art at the time of the
invention to have portable devices detecting information from computer
systems.” Final Act. 5 (referred to herein as “Official Notice”).

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THE REJECTIONS ON APPEAL

Claims 1–10, 12–16, and 18–25 are rejected under 35 U.S.C. § 102(b)
as anticipated by Lee.
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lee and Vinci.
Claims 17 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee and Official Notice.
ANALYSIS
The rejection of claims 1–10, 12–16, and 18–25 as anticipated by Lee
Appellants present separate arguments for independent claim 1 (App.
Br. 4–8) and dependent claims 12, 19, and 22 (App. Br. 8–10). We
separately address and select claims 1, 12, 19, and 22, with the remaining
claims (i.e., claims 2–10, 13–16, 18, 20, 21, and 23–25) standing or falling
with their respectively selected claim. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1
Independent claim 1 includes the limitation of “a remote animal
transceiver” located at the animal and “a separate animal control receiver,”
also located at the animal. The Examiner correlates the claimed “remote
animal transceiver” with Lee’s receiver 54, and the Examiner correlates the
claimed “separate animal control receiver” with Lee’s signal decoding logic
56. Final Act. 2; see also Lee Fig. 9.
Appellants dispute the Examiner’s correlation stating, “[u]nder no
reasonable interpretation of Lee can the ‘signal decoding logic’ be construed
to anticipate the [Appellants’] ‘separate animal control receiver.’” App. Br.
5; see also Reply Br. 2–3.
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The claimed “separate animal control receiver” is recited as being “to
effect” a control stimulus to the animal. Appellants’ Specification provides
further guidance on this point stating that this “separate animal control
receiver” device is “to enable” (Spec. ¶ 5), “to administer” (Spec. ¶ 7), “to
selectively cause” (Spec. ¶ 19), and “[to] provide[]” (Spec. ¶ 20) stimulation
to the animal. We abide by this guidance when interpreting the claim phrase
“separate animal control receiver” and its “effect” on the animal.
Regarding the limitation directed to a “separate” animal control
receiver, Lee expressly states that, with respect to Lee’s corresponding
animal control receiver 56, one skilled in the art would recognize that this
device “56 could be implemented in a number of ways, including discrete
components,” as well as otherwise. Lee 8:1–5 (emphasis added).
Appellants acknowledge Lee’s discussion of item 56 being a discrete
component, but instead focus on the other methods of implementation
discussed in Lee contending that Lee’s item 56 is for decoding a signal
already received and is not a “receiver.” App. Br. 7. More precisely,
Appellants contend, “[i]n fact, the signal decoding logic [i.e., Lee’s item 56]
never ‘receives’ any signal” and that, “no reasonable construction of
‘separate animal control receiver’ can encompass Lee’s ‘signal decoding
logic.’” App. Br. 7.
Figure 9 of Lee illustrates both items 54 and 56 in schematic form.
This figure depicts an arrow extending from item 54 to item 56.
Furthermore, when addressing “receiver 54 for receiving the RF deterrent
signal,” Lee states, “[t]he received RF deterrent signal is then decoded by
decoding logic 56.” Lee 7:65 to 8:1. Appellants do not explain how Lee’s
item 56 fails to receive this RF signal from item 54 for decoding purposes.
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Instead, Appellants contend, “the ‘signal decoding logic’ is neither a
receiver nor a transceiver.”1 App. Br. 6; see also App. Br. 5, 7.
The claim term “receiver” is not expressly defined in Appellants’
Specification and hence it is appropriate to consult a general dictionary
definition for guidance. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1348 (Fed. Cir. 2010). One source defines “receiver” as “a device or
apparatus that receives electrical signals, waves, or the like, and renders
them perceptible to the senses.”2 Another source defines “receiver” as “a
device for converting signals (as electromagnetic waves) into audio or visual
form.”3 Appellants’ Specification is consistent with these definitions and
employs the term “animal control receiver” to describe a device that enables,
administers, causes, or provides stimulation (“such as electrical shocks,
vibrational sensations and audible sounds or alarms”) to the animal. See
supra; see also Spec. ¶ 4. Claim 1 recites that this “receiver” device is “to
effect” a stimulus to the animal. Furthermore, Appellants acknowledge that
according to Lee, “[o]nce the signal is decoded, at least one control signal is

1 Appellants contend, “[b]ased on the clear language in Lee, no reasonable
interpretation of Lee can lead the person of ordinary skill in the art to
determine that the ‘signal decoding logic (56)’ is a receiver.” Reply Br. 5.
However, to ascertain whether Lee’s item 56 can reasonably correlate to the
claimed “receiver” or not, we must look to Appellants’ Specification for
guidance, not Lee. Appellants’ arguments to the effect that Lee’s item 56
“more properly correlates” to other of Appellants’ devices is not persuasive
that the Examiner erred in correlating Lee’s item 56 to the claimed “separate
animal control receiver.” Reply Br. 6; see also Final Act. 2.
2 See Dictionary.com and particularly,
http://www.dictionary.com/browse/receiver?s=t
3 See Merriam-Webster.com and particularly, http://www.merriam-
webster.com/dictionary/receiver
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routed to appropriate output devices.” App. Br. 7 (quoting Lee 2:66 to 3:4);
see also Lee 8:5–6. Lee also teaches that this control signal delivered to the
animal can be an electrostatic shock or an audio signal. See Lee Fig. 9 and
8:6–11.
According to the Examiner, “Lee discloses the logic decoder (56)
which receives the signal from the receiver and transmits it to the respective
stimulus.”4 Ans. 2. “Therefore in the broadest reasonable interpretation,”
Lee’s decoder 56 “can be considered a transceiver or a receiver” because it
“both receive[s] information or signals and send[s](transmit[s]) signals.”
Ans. 2–3. In view of the above, Appellants do not adequately explain how
Lee’s device 56 is not a “receiver” consistent with how this term is
employed in Appellants’ Specification. See supra. Appellants are also
unsuccessful in indicating how Lee’s decoder 56 fails “to effect” a stimulus
to the animal in accordance with Appellants’ Specification and claim 1.
Accordingly, we are not persuaded the Examiner erred in correlating Lee’s
signal decoding logic 56 to the claimed “separate animal control receiver.”
Final Act. 2.
Appellants further contend that the Examiner failed to “provide
extrinsic or intrinsic evidence” that Lee’s item 56 is a “receiver.” Reply Br.
2; see also Reply Br. 3. We are instructed that “[i]n the prosecution of a
patent, the initial burden falls on the PTO to set forth the basis for any
rejection” and further, “[o]nce the applicant is so notified, the burden shifts
to [Appellants] to rebut the prima facie case with evidence and/or

4 The Examiner further states, “the receiver clearly is sending the signal to
the logic which is then sending the signal to the stimulus.” Ans. 3. This
statement is consistent with Lee’s schematic shown in Figure 9.
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argument.” Hyatt v. Dudas, 492 F.3d 1365, 1369–70 (Fed. Cir. 2007). In
the matter before us and based on the above, Appellants have not presented
any evidence or persuasive argument that the Examiner failed to provide a
prima facie case or that the Examiner’s interpretation of the claim term
“receiver” is in error.
Appellants also seem to interpret the Examiner’s rejection as one
based on inherency.5 App. Br. 5; see also Reply Br. 3–4. However,
Appellants fail to indicate where the Examiner’s anticipation rejection is
based on inherency and not, instead, on the express disclosure in Lee of
signal decoding logic 56.
Appellants further contend that claim 1 recites that both the claimed
“remote animal transceiver” and the claimed ‘separate animal control
receiver” each “separately provide a stimulus to an animal.”6 App. Br. 6.
Although Appellants indicate support for this construction in their
Specification (see App. Br. 6), we decline “to import from the patent’s
written description limitations that are not found in the claims themselves.”
Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1375 (Fed. Cir.

5 Appellants contend that a “separate animal control receiver” “is neither
expressly disclosed by Lee nor necessarily present in Lee.” App. Br. 5.
Further, “the feature of a ‘separate animal control receiver’ cannot be
reasonable construed to read on Lee’s ‘signal decoding logic’ because there
is no description in Lee of the ‘signal decoding logic’ as being any form of
receiver or transceiver.” App. Br. 5.
6 Claim 1 concludes addressing “a different” control signal stating, “the
remote animal transceiver provides a control stimulus to the animal.”
However, there is no indication that this stimulus is provided to the animal
directly from the transceiver nor does this limitation preclude providing the
stimulus indirectly, such as via Lee’s separate animal control receiver.
There is also no recitation that such stimuli are provided simultaneously.
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2012) (citing Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 792
(Fed. Cir. 2010)). As such, we agree with the Examiner that Appellants are
“arguing limitations not claimed” and that “[the] intended use [disclosed in]
the [S]pecification [is] not read into the . . . the claims.” Ans. 3.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1–10, 13–16, 18, and 23–25.
Claims 12 and 22
Claim 12 depends directly from independent claim 1, and claim 22
depends directly from independent claim 18. Both claims 12 and 22 recite
limitations that the remote animal transceiver provides “at least one or both”
(a) a control stimulus or (b) a signal to the animal control receiver, for
stimulating the animal. Appellants acknowledge that Lee requires the
stimulus to “flow only through the signal decoding logic” and that the
receiver of Lee could not “effect a stimulus without the decoding logic.”
App. Br. 9. We understand Appellants to be acknowledging that Lee
discloses (b) above. As such, Appellants do not explain how Lee fails to
disclose “at least one” of the following limitations as recited. The disclosure
of “both” (a) and (b) is an option, not a requirement. Accordingly, we are
not persuaded the Examiner erred in rejecting claims 12 and 22 as
anticipated by Lee.
Claim 19
Claim 19 depends directly from claim 18 and includes the additional
limitation that the remote animal transceiver is configured to provide a
control “directly” to the animal. The Examiner does not indicate where Lee
discloses such a claimed delivery from the transceiver “directly” to the
animal since Lee teaches first transmitting the received control signal to
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signal decoding logic device 56 and from there to either an audio output
device 58 or an electrostatic shock generator 60. See Lee Fig. 9; see also
App. Br. 10. In short, the Examiner does not indicate where Lee teaches or
discloses stimulating the animal directly from Lee’s corresponding
transceiver (i.e., item 54) without the signal first passing through or to these
other devices. Accordingly, we do not sustain the Examiner’s rejection of
claim 19, or claims 20 and 21 that depend therefrom, as anticipated by Lee.
The rejection of (a) claim 11 as unpatentable over Lee and Vinci and (b)
claims 17 and 26 as unpatentable over Lee and Official Notice
Regarding these rejections, Appellants initially contend that “Vinci
fails to teach or suggest those features of claim 1 that are absent from Lee.”7
App. Br. 11; see also Reply Br. 6. Appellants further do not dispute the
Examiner’s reliance on Official Notice in rejecting claims 17 and 26.
Instead, Appellants contend that these claims are allowable “because Lee
and Vinci, either alone or in combination, fail to teach or suggest the feature
of a ‘separate animal control receiver.’” App. Br. 11–12.
Appellants’ contentions are not persuasive for the reasons previously
stated. Additionally, Appellants do not indicate how the Examiner erred in
further relying on the teachings of Vinci. Accordingly, we sustain the
Examiner’s rejections of claims 11, 17, and 26.

7 Vinci was relied on for teaching “an adjustable duration parameter,” not
for curing any deficiency in Lee. Final Act. 4.
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DECISION
The Examiner’s rejections of claims 1–18 and 22–26 are affirmed.
The Examiner’s rejection of claims 19–21 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART