Ex Parte Wojcik et alDownload PDFPatent Trials and Appeals BoardMay 1, 201914038448 - (D) (P.T.A.B. May. 1, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/038,448 09/26/2013 Mark Henry Wojcik 86462 7590 05/03/2019 STANLEY J. GRADISAR ATTORNEY AT LAW, LLC 1182 THATCH CIRCLE CASTLE ROCK, CO 80109 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. 6944-6 9860 EXAMINER TERRELL, EMILY C ART UNIT PAPER NUMBER 2689 NOTIFICATION DATE DELIVERY MODE 05/03/2019 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): stan@sjgaalpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK HENRY WOJCIK, GARY ALAN SHOFFNER, GORDON WILLIAM MURRAY, and GLENN CHARLES TUBBS Appeal2018-007851 Application 14/038,448 Technology Center 2600 Before JOHNNY A. KUMAR, JOHN A. EV ANS, and IRVINE. BRANCH, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 2-10, 12-20, 26-29, 31-35, 37-39, and 41--46, which are all the claims pending in this application. Claims 1, 11, 21-25, 30, 36, and 40 are cancelled. Final Act. 2. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Alcohol Monitoring Systems, Inc. App. Br. 4. Appeal2018-007851 Application 14/038,448 STATEMENT OF THE CASE Introduction Appellants' invention relates to: [T]he technical field of breath alcohol monitoring, and more particularly to a portable handheld wireless breath alcohol monitoring device that utilizes facial recognition and automatic retesting if an initial test is positive for alcohol or if an initial facial match is negative. Spec.i-fl Representative Claim 2. A method for remote breath alcohol monitoring, the method comprising the steps of: (a) performing an initial test, the initial test comprising the steps of: (al) receiving a first breath sample in a remote breath alcohol monitor; (a2) analyzing by the remote breath alcohol monitor the first breath sample for a first breath alcohol content; (a3) capturing with a camera in the remote breath alcohol monitor a first facial image; (b) performing a first facial match on the first facial image compared to an enrollment image; ( c) when the first breath alcohol content is greater than or equal to a predetermined value, automatically generating by the remote breath alcohol monitor an output requesting a confirmation test to determine if the first breath alcohol content is due to deep-lung breath alcohol or due to mouth alcohol; ( d) performing the confirmation test after a wait-to-retest period has expired, the confirmation test comprising the steps of: ( d 1) receiving a second breath sample in the remote breath alcohol monitor; ( d2) analyzing by the remote breath alcohol monitor the second breath sample for a second breath alcohol content; 2 Appeal2018-007851 Application 14/038,448 ( d3) capturing with the camera in the remote breath alcohol monitor a second facial image; ( e) performing a second facial match on the second facial Image compared to the enrollment image; and (f) sending by the remote breath alcohol monitor to the monitor network the first breath alcohol content and the first facial image, which comprise the initial test, along with the second breath alcohol content and the second facial image, which comprise the confirmation test, wherein the initial test and the confirmation test together comprise a test event. (Contested limitations emphasized). Rejections A. Claims 2--4, 6-10, 12-20, 26-29, 32-35 and 37-38 are rejected under 35 U.S.C. § I03(a) as being obvious over the combined teachings and suggestions of Gerner (U.S. Patent Application Publication 2013/0035602 Al) (hereinafter "Gerner"), Arringdale et al. (U.S. Patent Application Publication 2011/0309932 Al) (hereinafter "Arringdale") and Mitchell (U.S. Patent Application Publication 2012/0174651 Al) (hereinafter "Mitchell"). Final Act. 3-39. B. Claims 39 and 41--46 are rejected under 35 U.S.C. § I03(a) as being obvious over the combined teachings and suggestions of Gerner, Arringdale, Mitchell and Zhang et al. (U.S. Patent Application Publication 2011/0299741 Al) (hereinafter "Mitchell"). Final Act. 39-52. C. Claims 5 and 31 are rejected under 35 U.S.C. § I03(a) as being obvious over the combined teachings and suggestions of Gerner, Arringdale, Mitchell and Okamoto, (U.S. Patent Application Publication No. 2009/0169068 Al). Final Act. 52-55. 3 Appeal2018-007851 Application 14/038,448 Grouping of Claims Based on Appellants' arguments, we decide the appeal of rejection A of claims 2--4, 6-10, 12-20, 26-29, 32-35, and 37-38 on the basis of representative claim 2. We address rejections Band C, infra. See 37 C.F.R. § 4I.37(c)(1)(iv)(2012). ANALYSIS We have considered all of Appellants' arguments and any evidence presented. To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 4I.37(c)(l)(iv). We disagree with Appellants' arguments, and we adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the Final Office Action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. Final Act. 3-39; Ans. 18-25. However, we highlight and address specific findings and arguments for emphasis in our analysis below. Rejection A of Independent Claim 2 under 35 U.S.C. § 103(a) The Examiner finds the combination of Gerner, Arringdale, and Mitchell teaches or suggests the contested limitations of representative independent claim 2. Id. Appellants argue the Examiner has failed to establish a prima facie case of obviousness since the combination of references fails to teach or suggest (1) "the remote breath alcohol monitor automatically outputs a request for a confirmation test when the initial test for breath alcohol content is greater than or equal to a predetermined value (a failed test)"; (2) "performing the confirmation test after a wait-to-retest period has expired" 4 Appeal2018-007851 Application 14/038,448 and (3) "an initial test along with a confirmation test together comprising a test event". App. Br. 18-22, and 26-27. In addition, Appellants argue combining the teachings of Mitchell with the teachings of Gerner and Arringdale, would ( 4) "by necessity require changing the principle of operation of the devices of Gerner and Arringdale" (App. Br. 23-24) and (5) "would teach away" from the claimed invention (App. Br. 22-23 and 26). Contention 1 Appellants argue the Examiner has failed to establish a prima facie case of obviousness since the combination of references fails to teach or suggest "the remote breath alcohol monitor automatically outputs a request for a confirmation test when the initial test for breath alcohol content is greater than or equal to a predetermined value (a failed test)" as recited in claim 2, step (c). App. Br. 18-22. In particular, Appellants argue Arringdale fails to teach the above limitation in view of the definition of "confirmation test" and "initial test" in the specification because the re-testing of Arringdale "may be required" and so is "not automatic every time" and only occurs "after a passed test" rather than a failed test. App. Br. 21. In response, Examiner cites to ,r,r 85-91 of Arringdale as teaching this limitation. Final Act. 6-9. Arringdale teaches both "re-test" and a more specific example of a "re-test", called a "rolling re-test" employed in occurrences after a passed test since "it occurs after the car 20 has started". Arringdale ,r 88. Appellants' assertion that Arringdale teaches re-testing only after a failed test only recognizes the "rolling re-test" teaching of Arringdale. However, "All of the disclosures in a reference must be 5 Appeal2018-007851 Application 14/038,448 evaluated for what they fairly teach one of ordinary skill in the art." In re Boe, 355 F.2d 961,965 (CCPA 1966). Arringdale teaches after a failed test, the system may indicate the time remaining before a re-test may be attempted, wherein the re-test may be required according to the program of a particular system. Arringdale ,r 87- 88 ("If the estimated blood alcohol content is above an acceptable level ... [t]he failed test will be recorded ... handheld unit may indicate the time remaining before another test may be attempted ... [a] fter a short interval (sometimes a few minutes, sometimes a randomly selected time interval), a re-test may be required ... [t]he retest will transpire in much the same fashion as the initial test"). Arringdale further teaches that a retest is not defined as only occurring after a passed test. See Arringdale, ,r 85 ("test would be considered not acceptable ... unit 100 may give ... a message ... indicating that a re-test is necessary,") and Id. ,r,r 82-83 ("test possible drivers of a vehicle before . . . operation of the vehicle to assure that they are not operating the vehicle in a potentially dangerous intoxicated state ... impede operation of the vehicle 20 ... until an acceptable breath sample is provided" ( emphasis added)). Additionally, Arringdale teaches the system can be programmed according to any alternative desired rules and requirements, such that recitation of alternative methods or processes does not amount to a lack of requiring those alternative methods or processes as asserted by Applicant. Arringdale ,r 21 ("computer system may be adapted to recognize when the received data related to the breath alcohol testing indicate that any of a plurality of protocols established by the monitoring authority has been violated"), Id. ,r 91 ("unit 100 may be programmed to ... require the user 30 6 Appeal2018-007851 Application 14/038,448 to initiate a calibration ... [a]ltematively, the computer in the handheld unit may be programmed to periodically self-initiate"), Id. ,r 102 ("computers 40 can be programmed to implement various protocols established by any monitoring authority ... computers 40 can be programmed to implement a variety of protocols established by numerous monitoring authorities"), Id. ,r 105 ("In addition to providing passive feedback to monitoring authority computer 45, the provider computers 40 may be programmed and adapted to trigger affirmative steps in response to a failed test.") Accordingly, we agree with Examiner and find that Arringdale teaches the limitation "automatically outputs a request for a confirmation test when the initial test for breath alcohol content is greater than or equal to a predetermined value (a failed test)" recited in claim 2, step (c). Contention 2 Appellants argue the Examiner has failed to establish a prima facie case of obviousness since the combination of references fails to teach or suggest"performing the confirmation test after a wait-to-retest period has expired" as recited in claim 2, step (d). App. Br. 26-27. Appellants argue "neither Gerner, nor Arringdale nor Mitchell suggest a "wait-to-retest period" as defined by Appellants that ties an initial test to a confirmation test to determine if a positive first test was the result of mouth alcohol or deep-lung breath alcohol" in part because Arringdale fails to disclose determining if an initial test was induced by mouth alcohol or deep- lung breath alcohol and Mitchell fails to disclose performing a confirmation test or retest. App. Br. 26. 7 Appeal2018-007851 Application 14/038,448 In response, the Examiner finds: The Examiner admits ... Arringdale et al. do not teach the distinction between mouth alcohol and deep lung alcohol therefore, rendering arguments ... Arringdale ... moot ... Appellants' assertion that Mitchell also does not teach performing a confirmation test, or retest, requiring a second breath sample, if the first breath alcohol content is greater than or equal to a predetermined value, and only performing the confirmation test after a wait-to-retest period of time has elapsed, is not required to be taught by Mitchell, as Mitchell is simply made to teach distinguishing between mouth and deep lung alcohol. Ans. 19. In addition, Examiner finds Arringdale meets the definition of "wait- to-retest period" as defined by Appellants in ,r 27 of the specification. Non- Final Act. 61---62; Ans. 19. This finding is not disputed by Appellants. Furthermore, Appellants' restated arguments addressed to Gerner and Arringdale failing to teach a confirmation test or retest (App. Br. 26) are addressed supra in contention (1 ). Accordingly, we agree with Examiner's finding that contention (2) is insufficient to rebut a prima facie case of obviousness because one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Final Act. 24; See In re Keller, 642 F.2d 413, (CCPA 1981); In re Merck & Co., 800 F.2d 1091, (Fed. Cir. 1986); MPEP §2145, IV. Contention 3 Appellants argue the Examiner has failed to establish a prima facie case of obviousness since the combination of references fails to teach or 8 Appeal2018-007851 Application 14/038,448 suggest "an initial test along with a confirmation test together comprising a test event" as recited in Claim 2, step (f). App. Br. 27. Appellants argue Gerner fails to teach "sending ... the first breath alcohol content and the first facial image, which comprise the initial test, along with the second breath alcohol content and the second facial image, which comprise the confirmation test, wherein the initial test and the confirmation test together comprise a test event." Id. Appellants argue this is because "[T]here is no discussion in Gerner of the specifically defined limitations claimed by Appellant[ s] (initial test along with a confirmation test together comprising a test event that is sent to the monitor network)." Id. At the outset, and as an initial matter of claim construction, we look to the Specification for context regarding the broadest reasonable interpretation (BRI)2 of the claim term "test event". See independent Claim 2 ("wherein the initial test and the confirmation test together comprise a test event"). Appellants do not provide a definition for "test event". The Specification states: The analyze operation begins in block 736 where Monitor Network 206 will analyze the test results received: a single test; or, a test and a retest that are combined into a single test event. Spec. ,r 102. Although this portion of the specification states tests and retests can be combined into a "test event", the specification does not provide any limiting definition of what a "test event" is. Furthermore, the specification provides the "test event" can also consist of a single test. Spec. ,r 7 4 ("if the 2 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 9 Appeal2018-007851 Application 14/038,448 facial match is negative for the initial test or the retest, the test event is labeled as Pending Review" ( emphasis added)). Turning to the pertinent claim limitation, Claim 2 recites "the initial test and the confirmation test together comprise a test event" ( emphasis added). MPEP §2111.03 states "The transitional term 'comprising', which is synonymous with 'including,' 'containing,' or 'characterized by,' is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, (Fed. Cir. 2004) ("[L]ike the term 'comprising,' the terms 'containing' and 'mixture' are open-ended."). Accordingly, under a broadest reasonable interpretation, the aforementioned limitation is properly construed as "the initial test and the confirmation test together include a test event" such that the "test event" does not further limit "the initial test and the confirmation test" recited in claim 2 in any meaningful way, because a "test event" can consist of a single "initial test." Additionally, although Appellants argue Gerner fails to disclose limitations related to a confirmation test (App. Br. 27), Examiner did not cite Gerner to disclose a confirmation test. Final Act. 6-9. Rather, Examiner rejected the claim under the combined teachings of Gerner (for performing and sending a breath alcohol test), and Arringdale ( confirmation test.) Id. Furthermore, the teachings of Arringdale cited by Examiner disclose breath tests, including retests, are transmitted to a service provider, analogous to the claimed "monitor network" recited in claim 2, step (f). Arringdale, ,r,r 86-89 ("The test results will be transmitted to the relay 200 where they will be recorded into a log and either immediately or at a later time re-transmitted to a service provider 40 ... re-rest will transpire in much the same fashion as 10 Appeal2018-007851 Application 14/038,448 the initial test ... during a re-test ... the violation will be recorded and logged and transmitted to the service provider 40"). Finally, similar to Gerner, Arringdale teaches facial images are transmitted along with the test data from the initial test and further teaches sending facial images with the re-test. Arringdale, ,r 88 ("The re-test will transpire in much the same fashion as the initial test. It will be possible to compare the images of the persons that performed the test to verify that the same person performed both tests"), Id. ,r 75 ("Data from breath tests will be transmitted to the relay box for storage, along with images captured by the handheld unit cameras as part of the breath test"), Id. ,r 85 ("the verification image is recorded and logged with the test results and the test subject image"), Id. ,r 103 (log tables are located at monitor network 40 and "include an image that was captured when the breath sample was provided"). Accordingly, we agree with Examiner's finding that contention (3) is insufficient to rebut a prima facie case of obviousness. Contention 4 Appellants argue combining the teachings of Mitchell with the teachings of Gerner and Arringdale would"by necessity require changing the principle of operation of the devices of Gerner and Arringdale". App. Br. 23-24. In particular, Appellants argue, the teachings of Mitchell are not consistent with the teachings of Gerner in view of Arringdale because the "principle operation of Gerner and Arringdale is to take in a breath sample and measure the alcohol content once. Mitchell, on the other hand, measures the breath sample for alcohol content twice." Id. at 23. Appellants further argue that neither Gerner nor Arringdale include the hardware or software 11 Appeal2018-007851 Application 14/038,448 taught in ,r 81 of Mitchell to perform testing for mouth alcohol and alveolar ( deep breath) alcohol. App. Br. 23-24. Appellants further argue ,r 81 of Mitchell generally shows that hardware to enable a small early sample followed by a larger later sample and software to calculate two sample readings or alternatively integrate samples over time are not taught in Gerner or Arringdale. Id. We are not persuaded by Appellants' arguments. The Examiner cited ,r,r 7 4--80 of Mitchell to teach "a designation between mouth and deep lung alcohol" in order to "ensure a false positive test is not concluded." Final Act. 9-10; Ans. 20-22. All of the features of the structure in the secondary reference need not be bodily incorporated into the primary reference, but consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Furthermore, "[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review." In re Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983 (citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F .2d 965, 968 (CCP A 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). In that regard, the Supreme Court has indicated that: [It is error to] assum[ e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem .... Common sense teaches ... that familiar items may have obvious uses 12 Appeal2018-007851 Application 14/038,448 beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,420 (2007) (citation omitted). Furthermore, the artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F .2d 881, 889 (Fed. Cir. 1984). As such, we find that Gerner in view of Arringdale would be adjusted to accommodate teachings from Mitchell by one of ordinary skill in the art. In particular, we find that Mitchell's teaching of the benefit of distinguishing between mouth alcohol and deep lung alcohol reduces the likelihood of a false positive blood alcohol test being produced, such that one of ordinary skill would incorporate this concept into Gerner in view of Arringdale without incorporating every feature of the Mitchell structure into Gerner in view of Arringdale. We thus find that Gerner in view of Arringdale would be adjusted with the teaching from Mitchell because the combination as a whole would have taught one of ordinary skill in the art to make any additional modifications or adjustments to Gerner in view of Arringdale that may be needed to reduce the likelihood of a false positive being produced. Contention 5 Appellants argue combining the teachings of Mitchell with the teachings of Gerner and Arringdale would"would teach away" from the claimed invention. App. Br. 22-23 and 26. With respect to contention ( 5), Appellants assert Mitchell teaches one breath sample that is measured to determine an individual's deep lung 13 Appeal2018-007851 Application 14/038,448 alcohol as well as mouth alcohol with the one breath sample, such that Mitchell has no need for a confirmation test or a retest, and thus teaches away from what Appellants claim in independent claim 2. Id. Our reviewing court guides that a prior art reference does not teach away from the claimed subject matter unless the prior art reference criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not 'criticize, discredit, or otherwise discourage' investigation into the invention claimed") ( citing Fulton). Appellants have failed to provide any citation to Mitchell to show the prior art criticizes, discredits, or otherwise discourages the solution claimed. Based upon a preponderance of the evidence, we are not persuaded of error regarding the Examiner's underlying factual findings and ultimate legal conclusion of obviousness. Accordingly, we sustain rejection A of representative independent claim 2. The remaining dependent claims 3--4, 6-10, 12-20, 26-29, 32-35, and 37-38, also rejected under rejection A, fall with claim 2. See "Grouping of Claims" supra. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv). Rejections Band C of remaining claims 5, 31, 39, and 41-46 Appellants advance no separate arguments regarding claims 39 and 41--46, as rejected under rejection B, or for claims 5 and 31, as rejected by the Examiner under rejection C. Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv). 14 Appeal2018-007851 Application 14/038,448 DECISION We affirm the Examiner's decision rejecting claims 2-10, 12-20, 26- 29, 31-35, 37-39, and 41--46 under 35 U.S.C. § 103(a). 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). See 37 C.F.R. § 41.50(±). AFFIRMED 15 Copy with citationCopy as parenthetical citation