Ex Parte Tresenfeld

Patent Trial and Appeal Board

Feb 28, 2014

11298843 (P.T.A.B. Feb. 28, 2014)

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.
11/298,843 12/08/2005 Eugene Lee Tresenfeld TRESENFELD5 6630
45498 7590 03/03/2014
RISTO A. RINNE, JR.
COMPLETE PATENTING SERVICES
4525 MONTGOMERY DRIVE
SUITE 10
SANTA ROSA, CA 95409-5358
EXAMINER
LABBEES, EDNY
ART UNIT PAPER NUMBER
2682
MAIL DATE DELIVERY MODE
03/03/2014 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 EUGENE LEE TRESENFELD
____________

Appeal 2011-011626
Application 11/298,843
Technology Center 2600
____________

Before MARC S. HOFF, DENISE M. POTHIER, and IRVIN E. BRANCH,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 6-12, 14-16, 18-20, 22, and 23.
1
We have jurisdiction under
35 U.S.C. § 6(b).

1
Claims 5 and 13 have been cancelled. Claims 17 and 21 stand objected to
as dependent from a rejected base claim, but would be allowable if rewritten
in independent form. Appellant also states that claims 17 and 21 are
indicated as allowable if rewritten to overcome rejections under 35 U.S.C. §
112, but that no § 112 rejection is set forth in the Office action mailed June
8, 2010 (App. Br. 19). The Examiner’s Answer makes no mention of any
§ 112 rejection. We will treat claims 17 and 21 as not standing rejected
under § 112.
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Application 11/298,843

2
We affirm.

STATEMENT OF THE CASE
Appellant’s invention is a medical alert device that is adapted to be
worn proximate a specific area of a body and which is used to provide a
warning to others not to contact or impact the specific area of the body of the
person wearing the device (Spec. 4-5). Straps or other methods are used to
secure the device where desired (Spec. 6). The warning can be a visible
warning (a written message or symbol), an audible warning, or both (Spec.
7). In one embodiment, a proximity sensor detects the approach of others
and activates the visible and audible warnings (Spec. 7).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A medical alert device for attachment to a body of a person to
indicate a medical condition or infirmity that can be aggravated by uninvited
contact or by impact to said person by another person, comprising:
(a) a member, wherein said member includes a symbol or a text
message and wherein said symbol or said text message is visible to said
another person when said another person is disposed away from said person,
and wherein said text message includes a clear and unambiguous statement
instructing said another person to stay away from said person or instructing
said another person to avoid making contact with said person, and wherein
said symbol is generally understood as providing a clear and unambiguous
statement to said another person instructing said another person to stay away
from said person or instructing said another person to avoid making contact
with said person;
(b) means for attaching said member to a portion of said body of said
person; and
(c) wherein said medical alert device deters approach by said another
person toward said person an amount that is sufficient to lessen a likelihood
of an impact or uninvited contact occurring to said person by said another
person when said medical alert device is attached to said body of said
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3
person, and whereby a safety of said person is increased when said medical
alert device is attached to said body of said person.

REFERENCES
Richardson, III US 6,170,959 B1 Jan. 9, 2001
Morehead US 7,140,327 B2 Nov. 28, 2006
Mendes US 2006/0042139 A1 Mar. 2, 2006

REJECTIONS
Claims 1-4, 6-12, 14, 15, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Morehead in view of Mendes.
Claims 16 and 18-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morehead in view of Mendes and Richardson.
ISSUES
Appellant argues that Morehead does not teach or suggest use of its
illuminated collar to deter others from approaching the wearer of the collar
(App. Br. 21). Appellant further contends that modification of Morehead to
change its stated purpose would be an impermissible hindsight
reconstruction (App. Br. 22). Appellant asserts that Mendes teaches away
from the claimed invention because the caregiver must touch the bracelet of
Mendes and turn it around to read the medical conditions printed on its
inside (App. Br. 27). Appellant argues that Richardson similarly fails to
deter others from approaching the wearer of a device (App. Br. 31).
Appellant’s arguments present us with the following issues:
1. Does the combination of Morehead and Mendes teach or fairly
suggest a medical alert device to indicate a medical condition, including a
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Application 11/298,843

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member bearing a symbol or a text message, and means for attaching said
member to a portion of a person’s body?
2. Do the claim limitations describing the content of the text message
or symbol constitute nonfunctional descriptive material?
PRINCIPLES OF LAW
Nonfunctional descriptive material cannot render nonobvious an
invention that would otherwise have been obvious. In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004); Ex parte Curry, 84 USPQ2d 1272, 1274-75
(BPAI 2005), aff’d (Fed. Cir. No. 2006-1003, June 12, 2006); see also Ex
parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential)
(discussing cases pertaining to non-functional descriptive material).
When descriptive material is not functionally related to the substrate,
the descriptive material will not distinguish the invention from the prior art
in terms of patentability. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983).
ANALYSIS
CLAIMS 1-4, 6-12, 14, 15, 22, AND 23
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellant’s arguments do not persuade us that the Examiner erred in
rejecting representative claim 1. Appellant does not contest that the
combination of Morehead and Mendes teaches the structural limitations of
the claim: a member including a symbol or text message visible to another
person, and means for attaching said member to a portion of said body of
said person. We agree with the Examiner that the claimed invention
“actually is a system to convey information . . . . No where (sic) in the
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claims is there a mechanism that prevents the individual from approaching”
(Ans. 14). Appellant appears to agree that what is at issue is the information
conveyed by the device, arguing that Morehead does not “teach or suggest
use of her illuminated collar to deter pets from approaching others … [or
deter] others from approaching the wearer of the collar” (App. Br. 21,
emphasis added).
We further conclude, however, that the claim limitation
[W]herein said text message includes a clear and unambiguous
statement instructing said another person to stay away from said
person or instructing said another person to avoid making
contact with said person, and wherein said symbol is generally
understood as providing a clear and unambiguous statement to
said another person instructing said another person to stay away
from said person

describes nonfunctional descriptive material, which cannot render
nonobvious an invention that would otherwise have been obvious. Ngai,
367 F.3d at 1339. We find that Appellant’s descriptive material (the symbol
or text message) is not functionally related to the substrate (the member).
See Gulack, 703 F.2d at 1385. In Gulack, the invention consisted of a
plurality of individual digits imprinted on a band or ring at regularly spaced
intervals, which enabled the band or ring to be used to perform magic tricks
or display various aspects of music theory. Gulack, 703 F.2d at 1381. In
Appellant’s invention, however, the message or symbol displayed on the
member does not alter any aspect of the member’s function.
Because we conclude that Appellant’s claim limitations constitute
nonfunctional descriptive material, Appellant’s argument that the references
do not teach a symbol or text message that deters other persons from
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approaching the wearer (App. Br. 21-22) cannot establish the
nonobviousness of the invention.
We do not agree with Appellant that Mendes teaches away from the
invention by requiring the caregiver to touch the bracelet to determine the
medical condition (App. Br. 27). We agree with the Examiner’s finding that
Mendes discloses affixing medical information to either the outside surface
or the inside surface of its bracelet (Ans. 5; Mendes p. 2).
Accordingly, we conclude that the Examiner did not err in rejecting
claims 1-4, 6-12, 14, 15, 22, and 23 under § 103 as being unpatentable over
Morehead in view of Mendes. We sustain the Examiner’s rejection.
CLAIMS 16 AND 18-20
We find no error in the Examiner’s rejection of claims 16 and 18-20
over Morehead in view of Mendes and Richardson. We agree with the
Examiner’s finding that Richardson teaches a light emitting safety wrap that
further includes an audible alarm that may be employed when the LEDs are
enabled to emit light (Ans. 10; Richardson, col. 4, ll. 35-40). The
Examiner’s stated rationale for combining Richardson with Morehead and
Mendes, i.e., “as a supplement to warn individuals of the person wearing the
case” (Ans. 10), possesses a rational underpinning to support the conclusion
of obviousness. We sustain the Examiner’s § 103 rejection of claims 16 and
18-20.
CONCLUSIONS
1. The combination of Morehead and Mendes teaches a medical alert
device to indicate a medical condition, including a member bearing a symbol
or a text message, and means for attaching said member to a portion of a
person’s body.
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2. The claim limitations describing the content of the text message or
symbol constitute nonfunctional descriptive material.
DECISION
The Examiner’s decision rejecting claims 1-4, 6-12, 14-16, 18-20, 22,
and 23 is affirmed.
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

cdc