Ex parte Wyatt

Board of Patent Appeals and Interferences

Aug 24, 2001

08444242 (B.P.A.I. Aug. 24, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PATRICK WYATT
____________
Appeal No. 1999-1660
Application No. 08/444,242
____________
HEARD: August 15, 2001
____________
Before HARKCOM, Vice Chief Administrative Patent Judge, and
BARRETT and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 33 through 50, which are all of the claims
pending in this application.
Appellant's invention relates to a time recording method
for assisting in the treatment of sleep disorders. The user
automatically records awake time or sleep time by contacting a
switch connected to a timer while awake and automatically
releasing the switch when the user falls asleep. The timer
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records either awake time while the switch is depressed or
sleep time while the switch is released. Claims 33 and 40 are
illustrative of the claimed invention, and they read as
follows:
33. A time recording method for a user to automatically
record awake time in a rest position to assist in the
treatment of sleeping disorders, said method comprising the
steps of:
said user contacting a switch;
said user starting a timer by contacting the switch;
said user maintaining continued user contact with the
switch and recording awake time on said timer for so long as
the switch is contacted; and
said user removing user contact from the switch when the
user falls asleep and thereby stopping the timer.
40. A time recording method for a user to automatically
record sleep in a rest position time to assist in the
treatment of sleeping disorders, said method comprising the
steps of:
said user contacting a switch to control a timer;
said user maintaining continued user contact with said
switch and preventing the recordal of time on said timer for
so long as said continued contact is maintained;
said user removing user contact from the switch when the
user falls asleep and thereby starting the recordal of time on
the timer upon falling asleep; and
said user recording sleep time on said timer for so long
as the switch is released.
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The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Forbath 4,493,043 Jan. 08, 1985
Miller et al. (Miller) 5,124,960 Jun. 23, 1992
Claims 33 through 37, 40 through 44, 47 and 48 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Forbath.
Claims 38, 39, 45, 46, 49, and 50 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Miller in view
of Forbath.
Reference is made to the Examiner's Answer (Paper No. 20,
mailed February 3, 1999) for the examiner's complete reasoning
in support of the rejections, and to appellant's Brief (Paper
No. 19, filed August 20, 1998) for appellant's arguments
thereagainst.
OPINION
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by appellant and the examiner. As a consequence of our
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review, we will reverse the obviousness rejections of claims
33 through 50.
All of the claims are directed to methods for recording
either awake or sleep time to assist in the treatment of
sleeping disorders. Each claim includes in the preamble a
reference to recording sleep or awake times and to the use of
treating sleeping disorders and also includes a step of
removing user contact from a switch "when the user falls
asleep."
Forbath is directed to the recording of time periods
associated with childbirth such as for labor pain, fetus
movement, and breastfeeding. In Forbath, the user contacts a
switch, for example at the beginning of a contraction, thereby
starting a timer, maintains contact throughout the
contraction, and stops the timer by removing contact with the
switch at the end of the contraction. Nowhere does Forbath
suggest a step of removing contact with a switch as the user
falls asleep nor measuring awake or asleep time.
The examiner admits (Final Rejection, page 2) that
Forbath fails to disclose "the environment of recording
'sleep' and 'awake' times." The examiner, however, concludes
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that recording sleep and awake times are "obvious uses of the
disclosed method of the patent in view of a variety of
applications of the timer disclosed therein.... The device
and associated method may thus be used in any application
where time measuring is required with
a hand-held timer." The examiner continues (Final Rejection,
page 3) that
use of the device of Forbath is not limited to any
particular mental state of the user. Thus, the
method may be practiced in the manner disclosed to
measure time periods when the person is awake or
asleep, or engaged in other activity if switch 14 is
actuated previously. The involuntary action of
falling asleep of the user subsequent to actuation
of the timer switch in Forbath would be within the
ordinary and usual range of choices for such an
individual. The step of falling asleep as claimed,
therefore, cannot serve to provide any patentable
subject matter to the otherwise known method.
The examiner has essentially disregarded the claimed
method steps and focused solely on the device used to
implement the method. Since Forbath discloses a timer with a
user-activated switch, the examiner concludes that the
remaining claim limitations (i.e., those directed to the
method per se) would have been obvious.
All of the claims are directed to methods (or processes).
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35 U.S.C. § 100(b) states that "'process' means process, art
or method, and includes a new use of a known process, machine,
manufacture, composition of matter, or material." Although
Forbath's device may "be used in any application where time
measuring is required with a hand-held timer," the question
still remains whether the prior art suggested the particular
claimed use or application. The Federal Circuit has held that
"[t]he mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-4 n.14 (Fed. Cir. 1992),
citing In re Gordon, 733 F.2d 900, 902, 221, USPQ 1125, 1127
(Fed. Cir. 1984). Appellant has basically claimed a new use
for an old timer and switch, which can be patentable under the
statute if such new use is not disclosed or suggested by the
prior art.
The entire disclosure of Forbath is directed to
activities associated with childbirth. Nowhere does Forbath
suggest that the device and method may be used with any
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activities other than those explicitly described. Further, in
Forbath, the user of the timer must consciously press the
switch to activate the timer, continue pressing the switch to
maintain the on-state of the timer, and consciously release
the switch to stop the timer at the end of the activity being
timed. For claims 40, 48, and 50, Forbath is diametrically
opposed to the claimed invention in that Forbath times an
activity during which a user is very much awake, whereas the
claims recite tracking the time during which the user is
asleep. Claims 33, 47, and 49, as well as claims 40, 48, and
50, recite that the user releases the switch when he falls
asleep, whereas Forbath requires the user to be awake to
release the switch. Thus, Forbath's disclosure again is
contrary to the claimed invention.
Further, the examiner states (Answer, page 4) that
the use of a timer to measure the time of a specific
event has no patentable significance with respect to
the event itself, unless there exists some physical
connection between the event environment and the
timer. In applicant's case, there exists no
connection or physical method step between the timer
and the sleep environment.... The terms "awake
time" "and sleep time" add nothing to the claims
other than the user's mental state.
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In the present claims, there is a physical connection between
sleeping (the examiner's "event environment") and the timer.
The user must fall asleep to release the switch and, thus,
activate or deactivate the timer. As to a connection or
physical method step between the timer and the sleep time,
each claim recites a method step of the user removing contact
from the switch (and thus activating or deactivating the
timer) "when the user falls asleep." In the face of such a
claim limitation, the examiner's assertion that there is no
physical method step between the timer and the sleep time is
incomprehensible. Last, the terms "awake time" and "sleep
time" do not merely add the user's mental state, as they
describe what the timer is to monitor.
Forbath clearly does not disclose using a timer and
switch in measuring sleep or awake time nor the step of
releasing the switch when a user falls asleep. Nor does
Forbath suggest such use or method step. For a rejection
under 35 U.S.C. § 103, the examiner is required to provide a
reason from some teaching, suggestion or implication in the
prior art as a whole, or knowledge generally available to one
of ordinary skill in the art, why one having ordinary skill in
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the pertinent art would have been led to modify the prior art
to arrive at the claimed invention. Uniroyal, Inc. v. Rudkin-
Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438 (Fed. Cir.
1988), cert. denied, 488 U.S. 825 (1988). These showings by
the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). Furthermore, "[o]bviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg., Inc. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239
(Fed. Cir. 1995), citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13
(Fed. Cir. 1983). The examiner has provided no evidence or
convincing line of reasoning as to why the skilled artisan
would have used the device and method of Forbath for timing
awake or sleep time such that the switch is released when the
user falls asleep. Therefore, the examiner has failed to
establish a prima facie case of obviousness. Accordingly, we
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cannot sustain the rejection of claims 33 through 37, 40
through 44, 47 and 48 over Forbath.
For claims 38, 39, 45, 46, 49, and 50, the examiner
relies on Miller in view of the teachings of Forbath. Miller,
discloses the placement of a switch and timer on a user's
finger and arm, respectively. Miller, however, is directed to
timing events, such as during athletic activities, where the
user must be able to concentrate on such activity and is,
thus, very much awake. Miller does not suggest using the
timer for measuring sleep or awake time. Additionally, the
user in Miller activates a timer by depressing and releasing a
switch. The user then stops the timer at the conclusion of
the activity by again depressing and releasing the switch.
Both activation and deactivation are accomplished by
consciously pressing the switch. Miller's method differs
significantly from the claimed methods of activating and
deactivating a timer by releasing contact with a switch when
the user falls asleep. Consequently, Miller cannot cure the
above-noted deficiency of Forbath. Therefore, we cannot
sustain the rejection of claims 38, 39, 45, 46, 49, and 50
over Miller and Forbath.
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CONCLUSION
The decision of the examiner rejecting claims 33 through
50 under 35 U.S.C. § 103 is reversed.
REVERSED
GARY V. HARKCOM )
Vice Chief Administrative Patent Judge )
)
)
)
)BOARD OF
PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
)
INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
AG/RWK
Appeal No. 1999-1660
Application No. 08/444,242
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