INTERNATIONAL BUSINESS MACHINES CORPORATIONDownload PDFPatent Trials and Appeals BoardMay 17, 20212020003188 (P.T.A.B. May. 17, 2021) Copy Citation 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. 14/744,417 06/19/2015 MINKYONG KIM YOR920150366US1 4137 48915 7590 05/17/2021 CANTOR COLBURN LLP-IBM YORKTOWN 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER CIESLEWICZ, ANETA B ART UNIT PAPER NUMBER 2829 NOTIFICATION DATE DELIVERY MODE 05/17/2021 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MINKYONG KIM, MIN LI, CLIFFORD A. PICKOVER, and VALENTINA SALAPURA Appeal 2020-003188 Application 14/744,417 Technology Center 2800 Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and GEORGE C. BEST, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 8, 10–15, and 17–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as International Business Machines Corporation. Appeal Br. 2. Appeal 2020-003188 Application 14/744,417 2 CLAIMED SUBJECT MATTER The claims are directed to a computer program product for adjusting a hardness of a floor covering. See, e.g., claim 8. The computer program contains instructions for monitoring a user on a floor covering, detecting a trigger event, such as the user slipping or falling, and adjusting a parameter of an adjustable layer of the floor covering to decrease its hardness. Id.; Spec. ¶ 12. The parameter may be a viscosity of a magnetorheological fluid or electrorheological fluid disposed within the adjustable layer. Claim 8, reproduced below, is illustrative of the claimed subject matter: 8. A computer program product for adjusting a hardness of a floor covering, the computer program product comprising: a non-transitory storage medium readable by a processing circuit and storing instructions for execution by the processing circuit for performing a method comprising: monitoring a user on the floor covering, wherein the floor covering includes a surface layer that consists of one of a hardwood floor, a linoleum floor or an engineered hardwood floor; detecting a triggering event associated with the user; adjusting a parameter of an adjustable layer of the floor covering, wherein the adjustment causes a decreases in the hardness of the adjustable layer of the floor covering, wherein the parameter of the adjustable layer is a viscosity of a magnetorheological fluid or electrorheological fluid disposed within the adjustable layer. Appeal Br. 8 (Claims Appendix). Appeal 2020-003188 Application 14/744,417 3 REFERENCES The Examiner relies on the following prior art: Name Reference Date Barvosa-Carter US 7,140,478 B2 Nov. 28, 2006 Wolf US 2006/0001545 A1 Jan. 5, 2006 Mao US 2006/0156663 A1 July 20, 2006 Datema US 2012/0101635 A1 Apr. 26, 2012 REJECTIONS Claims 8, 10–15, and 17–20 are rejected under 35 U.S.C. § 1032 as obvious over Wolf in view of Barvosa-Carter and Mao. Final Act. 3–4. Claims 8, 10–15, and 17–20 are rejected under 35 U.S.C. § 1033 as obvious over Wolf in view of Datema and Mao. Final Act. 9. OPINION The Rejection over Wolf, Barvosa-Carter, and Mao Turning first to the rejection of claims 8, 10–15, and 17–20 as obvious over Wolf in view of Barvosa-Carter and Mao, we note that Appellant does not argue any claim apart from the others. We select claim 8 as representative for resolving the issues on appeal. The issue as presented by Appellant is whether it would have been obvious to the ordinary artisan to have combined the teachings of Wolf and Barvosa-Carter with Mao in the manner suggested by the Examiner. Appeal 2 The Examiner lists the statutory basis as 35 U.S.C. § 102(a)(1) but performs an obviousness analysis. Final Act. 3. The error was harmless given that Appellant understands the proper basis to be under 35 U.S.C. § 103. Appeal Br. 3. 3 The Examiner again lists the wrong statutory basis, but the error was harmless as Appellant understood the basis to be 35 U.S.C. § 103. Appeal 2020-003188 Application 14/744,417 4 Br. 4. According to Appellant, the Examiner’s rejection rests on improper hindsight reconstruction. Id. We disagree. There is no dispute that Wolf teaches a computer program product for adjusting a hardness of a floor covering. Compare Final Act. 4, with Appeal Br. 4–5. Although Wolf does not disclose using a magnetorheological fluid or electrorheological fluid to adjust the hardness, neither does Wolf limit the manner of adjusting the hardness of the floor system. Instead, Wolf provides a range of example adjustable systems. Wolf ¶ 182. Amongst the examples is a pneumatic floor system that adjusts hardness by adjusting air pressure. Id. Barvosa-Carter provides evidence that hardness adjusting systems using magnetorheological fluid or electrorheological fluid were also known. See Barvosa-Carter col. 6, ll. 35–50 (describing electrorheological (ER) and magnetorheological (MR) fluids as having an apparent viscosity that can change reversibly from liquid-like to solid-like behavior when subjected to an electric field.); col. 10, ll. 28–50 (describing the use of the ER/MR fluids in energy absorbing assemblies that replace conventional padded interior surfaces in a vehicle, including in vehicles floors, to cushion the occupant on impact). When a claim is to a combination that “‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)). Given that Barvosa-Carter’s ER/MR fluid performs the same hard to soft transition function as air in Wolf’s system and both systems’ overall purpose is to Appeal 2020-003188 Application 14/744,417 5 cushion impact, a preponderance of the evidence supports the Examiner’s finding that substituting one for the other would have been obvious to the ordinary artisan. The Examiner merely relies on Mao to establish that it was known to use hardwood, linoleum, and engineered hardwood materials as the surface layer in flooring. There can be no real dispute on that point. What’s more, claim 8 is directed to a computer program and the identity of the surface layer material of the flooring has little limiting impact on the instructions for performing the step of monitoring a user on the floor covering. Appellant has not identified a reversible error in the Examiner’s rejection over Wolf, Barvosa-Carter, and Mao. The Rejection over Wolf, Datema, and Mao In the Examiner’s second rejection, the Examiner substitutes Datema for Barvosa-Carter. There is no dispute that Datema teaches a flooring system having adjustable hardness that includes electrorheological fluid with adjustable viscosity. Compare Final Act. 10, with Appeal Br. 6. Nor has Appellant identified a reversible error in the Examiner’s finding of a reason to include Datema’s adjustable layer in the floor covering system disclosed by Wolf. Appeal Br. 6. Appellant’s arguments against the Examiner’s use of Mao in the rejection are unpersuasive for the reasons given above. Thus, Appellant has not identified a reversible error in the Examiner’s second rejection. Appeal 2020-003188 Application 14/744,417 6 CONCLUSION The Examiner’s decision to reject claims 8, 10–15, and 17–20 is AFFIRMED. DECISION` SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8, 10–15, 17–20 103 Wolf, Barvosa- Carter, Mao 8, 10–15, 17–20 8, 10–15, 17–20 103 Wolf, Datema, Mao 8, 10–15, 17–20 Overall Outcome 8, 10–15, 17–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). AFFIRMED Copy with citationCopy as parenthetical citation