Ruth E. Skocic

Patent Trials and Appeals Board

Jan 27, 2020

14015305 - (D) (P.T.A.B. Jan. 27, 2020)

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.
14/015,305 08/30/2013 Ruth E. SKOCIC SK-3249 4108
33055 7590 01/27/2020
Law Offices of John D. Gugliotta, P.E. Esq., LPA
P.O. Box 506
Richfield, OH 44286
EXAMINER
LE, KHOI V
ART UNIT PAPER NUMBER
2436
MAIL DATE DELIVERY MODE
01/27/2020 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 RUTH E. SKOCIC
Appeal 2018-006059
Application 14/015,305
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
LINZY T. MCCARTNEY, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 MLP Technology Inc.,
appeals from the Examiner’s decision rejecting claims 1–3, 5–11, and 13–
22, which are all claims pending in the application. Appellant has canceled
claims 4 and 12.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as MLP
Technology, Inc. Appeal Br. 2.
2 The Examiner appears to have mischaracterized claim 4 as having been
withdrawn from consideration by Appellant. Compare Final Act. 1 (Office
Action Summary), with Amendment filed May 9, 2014 (canceling claim 4).
In addition, claim 12 was canceled by an Amendment filed January 29,
2015, and is not before us on appeal.
Appeal 2018-006059
Application 14/015,305

2
STATEMENT OF THE CASE3
The claims are directed to animal data management. See Spec. (Title).
In particular, Appellant’s disclosed embodiments and claimed invention
“relate[] to a data management system, and more specifically, to a data
management system allowing for storing, managing and transmitting
information for animals as well as a method for such storage, management
and transmission.”. Spec. ¶ 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested prior-art limitations):
Exemplary Claims
1. An animal data management system comprising:
a server for registering an animal by receiving animal
data including a first biometric identifier;
a memory configured to store the animal data including
the first biometric identifier; and
a user system for accessing the animal data from the
memory, wherein the animal data includes a health certificate
with the signature of a veterinarian confirming the animal is
free of an infectious disease.
2. The animal data management system of claim 1,
further comprising: a video remote interpreting device
connected to the user system.

3 Our decision relies upon Appellant’s Appeal Brief (“Br.,” filed
Dec. 1, 2015); Examiner’s Answer (“Ans.,” mailed May 2, 2017); Final
Office Action (“Final Act.,” mailed May 20, 2015); and the original
Specification (“Spec.,” filed Aug. 39, 2013) (ultimately claiming benefit of
US 61/412,662, filed Nov. 11, 2010). Appellant did not file a Reply Brief in
response to the factual findings and legal conclusions in the Examiner’s
Answer.
Appeal 2018-006059
Application 14/015,305

3
19. The animal server exchange of claim 18, wherein
at least one of the cause of the sickness and/or the cause of the
death is a contagious disease.
Related Application
Appellant incorrectly identifies Application Serial No 13/351,888 as
being copending and related to the present application and subject of an
appeal. Br. 2.
However, we determine the correct Serial No. is 13/531,888, with
Appeal No. 2018-008630, for which a Decision affirming the Examiner’s
rejections was mailed on December 31, 2019.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Lewis et al. (“Lewis”) US 2003/0229452 A1 Dec. 11, 2003
Yarnall Jr (“Yarnall”) US 2007/0226257 A1 Sept. 27, 2007
Wood et al. (“Wood”) US 2007/0288759 A1 Dec. 13, 2007
Appeal 2018-006059
Application 14/015,305

4
Rejections on Appeal4
R1. Claims 1, 5–11, 13, 15, 17, 18, 20, and 21 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Lewis. Final Act. 7.5
R2. Claims 2, 3, 14, 16, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Lewis and Wood.
Final Act. 17.6
R3. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lewis and Yarnall. Final Act. 25.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 3–10) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of anticipation
Rejection R1 of claims 1, 5–11, 13, 15, 17, 18, 20, and 21 on the basis of
representative claim 1; and we decide the appeal of obviousness Rejection

4 In the event of further prosecution, we leave it to the Examiner to
determine whether claims 1–3 and 5–11 meet the subject matter eligibility
requirements under 35 U.S.C. § 101 in light of the most recent Director
Guidance. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (January 7, 2019) (https://www.govinfo.gov/content/pkg/FR-
2019-01-07/pdf/2018-28282.pdf); and see “October 2019 Update: Subject
Matter Eligibility,” https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf. Although the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so. See Manual of Patent Examining Procedure
(MPEP) 1213.02.
5 The Examiner includes claim 12 under Rejection R1, however claim 12
has been canceled. See n.2, supra.
6 The Examiner omits claim 22 in the explicit statement of Rejection R2,
but includes analysis of claim 22 in the detailed rejection. Compare Final
Act. 17 with Final Act. 21. We view this omission as harmless error.
Appeal 2018-006059
Application 14/015,305

5
R2 of claims 2, 3, 14, and 16 on the basis of representative claim 2. We
decide the appeal of obviousness Rejection R3 of claim 19, separately
argued, infra. We address obviousness Rejection R2 of independent claim
22, not argued separately, infra.7
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–3,
5–11, and 13–22 and, unless otherwise noted, we incorporate by reference
herein and adopt as our own: (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner’s Answer in response to Appellant’s
arguments. We highlight and address specific findings and arguments
regarding claims 1, 2, and 19 for emphasis as follows.

7 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
Further, “[u]nder each heading identifying the ground of rejection being
contested, any claim(s) argued separately or as a subgroup shall be argued
under a separate subheading that identifies the claim(s) by number. A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” Id.
(emphasis added). In addition, when Appellant does not separately argue the
patentability of dependent claims, the claims stand or fall with the claims
from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Appeal 2018-006059
Application 14/015,305

6
1. § 102(b) Rejection R1 of Claims 1, 5–11, 13, 15, 17, 18, 20, and 21
Issue 1
Appellant argues (Br. 3–5) the Examiner’s rejection of claim 1 under
35 U.S.C. § 102(b) as being anticipated by Lewis is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses “[a]n
animal data management system” that includes, inter alia, “a server for
registering an animal” that receives “animal data including a first biometric
identifier,” as recited in claim 1? (emphasis added).
Principles of Law
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps. First, the Board must interpret the claim
language, where necessary. As our reviewing court has held, and because
the PTO is entitled to give claims their broadest reasonable interpretation,
review of our claim construction is limited to determining whether it was
reasonable. In re Morris, 127 F.3d 1048, 1055 (Fed.Cir.1997). Secondly,
the Board must compare the construed claim to a prior art reference and
make factual findings that “each and every limitation is found either
expressly or inherently in [that] single prior art reference.” In re Crish, 393
F.3d 1253, 1256 (Fed. Cir. 2004).
Further, “[i]n the patentability context, [although] claims are to be
given their broadest reasonable interpretations . . . limitations are not to be
read into the claims from the specification.” In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning
assigned to a term “must be sufficiently clear in the specification that any
Appeal 2018-006059
Application 14/015,305

7
departure from common usage would be so understood by a person of
experience in the field of the invention.” Multiform Desiccants, Inc. v.
Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer
v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008)
(“A patentee may act as its own lexicographer and assign to a term a unique
definition that is different from its ordinary and customary meaning;
however, a patentee must clearly express that intent in the written
description.”). Absent an express intent to impart a novel meaning to a
claim term, the words take on the ordinary and customary meanings
attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
Analysis
Appellant contends “[t]he present invention includes a number of
features that are unanticipated in the above mentioned reference, in
particular, said ‘animal data including a first biometric identifier’ as
provided in independent claim 1.” Br. 4.
The Examiner initially finds that Lewis, in paragraph 158, discloses
“data including a first biometric marker” by describing “the user enters
information about animal in the database such as pet characteristic
information, owner information, veterinarian clinic information, health-
related information.” Final Act. 7. The Examiner elaborates on this finding
in the Answer.
The Examiner respectfully submits that Lewis does teach
or suggest animal data including a first biometric identifier as
provided in claim 1. As described in pars. [0105] & [0158] and
Appeal 2018-006059
Application 14/015,305

8
illustrated in Figs 3 & 11 in Lewis's systems and methods, the
vaccination record/history, pet characteristic information, lost
pet information or pet owner information which is stored in the
database for administrating to the pet/animal is the pet/animal
data. Therefore, examiner believes that Lewis does disclose
limitation argued above.
Ans. 3–4 (emphasis added).
We note Lewis discloses “[a]nimal [pet] characteristic data
generally includes information that helps to identify a particular animal.
Such information may include the name, breed, gender, weight, height, eye
color, distinctive markings, reproductive status, birth date, photograph,
and the like for an animal.” Lewis ¶ 97.
Thus, under the broadest reasonable interpretation standard, the
Examiner concludes, and we agree, the claimed “biometric identifier” reads
on Lewis’ disclosed “pet characteristic information.”
We agree with the Examiner because a broad, but reasonable
definition of “biometric(s)” is “the measurement and analysis of unique
physical or behavioral characteristics (such as fingerprint or voice
patterns) especially as a means of verifying personal identity.” See The
Merriam-Webster.com Dictionary, https://www.merriam-webster.com/
dictionary/biometrics (accessed 1/18/2020).
Therefore, we agree with the Examiner’s finding that Lewis’s pet or
animal characteristic data, as described by Lewis (¶ 97), discloses the
disputed limitation of claim 1.
In further support of the Examiner’s finding of anticipation, and as
additional matter of claim construction, we note the “animal data including a
first biometric identifier” recited in claim 1, represents data that is not
Appeal 2018-006059
Application 14/015,305

9
recited as imparting functionality to a machine or computer within the broad
scope of claim 1. Therefore, we conclude system claim 1 merely recites a
server that receives data (i.e., “receiving animal data including a first
biometric identifier”) that is merely descriptive, and is not actually used to
perform any function, within the scope of claim 1.
We need not give patentable weight to descriptive material absent a
new and unobvious functional relationship between the descriptive material
and the substrate. See Ex parte Nehls, 88 USPQ2d 1883, 1887–90 (BPAI
2008) (precedential); see also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004); In re Lowry, 32 F.3d 1579, 1583–84 (Fed. Cir. 1994); see also Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative)
(“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”),
aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) (“Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious.”), aff’d, No. 06-1003 (Fed. Cir. 2006) (Rule 36). Thus, non-
functional descriptive material does not confer patentability to inventions
that are otherwise either anticipated or obvious over the prior art.
Appellant further alleges, “[t]he present invention includes a number
of features that are unanticipated in . . . [Lewis], in particular . . . said
information including ‘at lease [sic] one of the owner’s health directive for
the animal’ or ‘statement of treatment of the animal’ of independent
claim 5.” Br. 4. Appellant makes similar assertions regarding dependent
claims 8, 9, 13, 16, 19, and 20. Id.
Appeal 2018-006059
Application 14/015,305

10
Mere attorney arguments and conclusory statements unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”).
Therefore, on the record before us, based upon the Examiner’s
findings above, and buttressed by our findings of Appellant’s reliance upon
non-functional descriptive material, we are not persuaded of error in the
Examiner’s reliance on the cited prior art to disclose the disputed limitation
of claim 1, nor do we find error in the Examiner’s resulting legal finding of
anticipation. Therefore, we sustain the Examiner’s anticipation rejection of
independent claim 1, and grouped claims 5–11, 13, 15, 17, 18, 20, and 21
which fall therewith. See Claim Grouping, supra.
2. § 103(a) Rejection R2 of Claims 2, 3, 14, and 16
Issue 2
Appellant argues (Br. 5–6) the Examiner’s rejection of claim 2 under
35 U.S.C. § 103(a) as being obvious over the combination of Lewis and
Wood is in error. These contentions present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests “[t]he animal data management system of claim 1” that
Appeal 2018-006059
Application 14/015,305

11
further includes, “a video remote interpreting device connected to the user
system” as recited in claim 2?
(b) Did the Examiner err in combining Lewis and Wood in the
manner suggested because, allegedly, Wood is non-analogous art?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
A rejection under 35 U.S.C. § 103 cannot be based on non-analogous
art. Innovention Toys, LLC, v. MGA Entertainment, Inc., 637 F.3d 1314,
1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In
re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Art is analogous when it is:
(1) from the same field of endeavor as the claimed invention; or
(2) reasonably pertinent to the particular problem faced by the inventor, if
the art is not from the same field of endeavor. Bigio, 381 F.3d at 1325–26.
Analysis
(a) – All Limitations are Taught or Suggested
Appellant contends “Lewis fails to disclose . . . a video remote
interpreting device . . . . Additionally, Wood fails to provide th[is] element[]
as well. While the examiner indicates that Wood teaches the use of a
Appeal 2018-006059
Application 14/015,305

12
biometric device 70 can be a digital video camera, this is not the same as
video remote interpreting device.” Br. 5.
Appellant’s Specification describes “[e]xamples of communication
devices used are Video Remote Interpreting (VRI) devices . . . [which are]
devices [that] aid people who are deaf and are videoconferencing equipment
to connect the person with the disability to an interpreter (of sign language)
in a remote location over the internet.” Spec. ¶ 109 (emphasis added).
The Examiner cites Wood as teaching or suggesting that Wood’s
biometric device 70 can be, among other things, a digital video camera.
Wood ¶ 75. Under the broadest reasonable interpretation, and in light of
Appellant’s Specification quoted above, we conclude the recited “video
remote interpreting device” reasonably reads on the disclosed
videoconferencing equipment.
(b) – Wood is Reasonably Pertinent to the Problem Solved
Appellant contends:
The Wood reference fails to sufficiently address the full scope
of the problem pertinent to the present invention. As noted in In
re Klein, 647 F.3d 1343 (Fed. Cir. 2011), a prior art reference in
a separate field of endeavor will not be analogous art unless it is
pertinent to the entire problem being solved by the challenged
patent. Id. at 21 (emphasis in Board’s decision). Thus, because
this primary prior art reference is only pertinent to some aspects
of the present problems, rather than the entire problem, the
Wood reference is non-analogous art.
Br. 6.
Appellant’s argument focuses on whether the prior art references are
analogous. As mentioned above, “[t]wo separate tests define the scope of
Appeal 2018-006059
Application 14/015,305

13
analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
“Whether a reference in the prior art is ‘analogous’ is a fact question.”
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). “A reference
is reasonably pertinent if . . . it is one which, because of the matter with
which it deals, logically would have commended itself to an inventor’s
attention in considering his problem.” Id. at 659.
However, “The Supreme Court’s decision in KSR . . . directs us to
construe the scope of analogous art broadly.” Wyers v. Master Lock Co.,
616 F.3d 1231, 1238 (Fed. Cir. 2010). “The field of endeavor of a patent is
not limited to the specific point of novelty, the narrowest possible
conception of the field, or the particular focus within a given field.”
Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016).
The Examiner responds to Appellant’s non-analogous art argument by
stating, “it would have been obvious to one of ordinary skill in the art to
combine the teaching of Wood into the systems and methods of Lewis to
enhance security and privacy protection and substantially reduce the
magnitude of costs for corrections associated with the fraudulent access and
use of the programs.” Ans. 14 (emphasis added).
We agree with the Examiner’s analysis because, when security and
privacy are considered as being desirable when implementing the claimed
Appeal 2018-006059
Application 14/015,305

14
invention, the teachings of Wood may be construed as “reasonably
pertinent” to the particular security and privacy problems to which the
inventor is involved.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest disclose the disputed limitation of claim 2, nor do we find error
in the Examiner’s resulting legal conclusion of obviousness. Therefore, we
sustain the Examiner’s obviousness rejection of independent claim 2, and
grouped claims 3, 14, and 16, which fall therewith. See Claim Grouping,
supra.
3. § 103(a) Rejection R3 of Claim 19
Issue 3
Appellant argues (Br. 6–10) the Examiner’s rejection of claim 19
under 35 U.S.C. § 103(a) as being obvious over the combination of Lewis
and Yarnall is in error. These contentions present us with the following
issues:
Did the Examiner err by providing improper motivation to combine
the references in the manner suggested to render claim 19 obvious?
Analysis
Appellant confusingly states “[h]erein the Wood reference is not a
primary prior art reference qualified as analogous art under the second prong
of the Bigio test. The Yarnall reference fails to sufficiently address the full
scope of the problem pertinent to the present invention.” Br. 7. “Thus,
because this primary prior art reference is only pertinent to some aspects of
the present problems, rather than the entire problem, the Wood reference is
Appeal 2018-006059
Application 14/015,305

15
non-analogous art.” Id. We note the rejection is for obviousness over the
combination of Lewis and Yarnall, and Wood is not involved.
As best as can be determined, and similar to Issue 2(b), supra,
Appellant appears to argue the Yarnall reference does not sufficiently
address the full scope of the problem pertinent to the present invention, and
asserts “a prior art reference in a separate field of endeavor will not be
analogous art unless it is pertinent to the entire problem being solved by the
challenged patent.” Br. 7 (citation omitted).
Appellant additionally argues, “[t]here is no suggestion as to the
desirability of any modification of the references to describe the present
invention.” Br. 8.
“There is nothing in the prior art or the examiner[’]s arguments
that would suggest the desirability or obviousness of
maintaining animal identifier information as well as animal
health care information and owner information, in addition to
information for a second animal identifier and a caparison [sic]
of location information relating to health or death information
between the two as well and relationship of contagious diseased
therebetween.
Br. 9. “To summarize, only in hindsight does it appear obvious to one of
ordinary skill in the pertinent art to combine the present claimed and
disclosed combination of elements.” Br. 10.
In response, the Examiner finds it would have been obvious to a
person with skill in the art “to combine the teaching of Yarnall into the
systems and methods of Lewis to provide for breeders, owners, veterinarians
and government agencies know and understand a great deal of information
about animals in their possession, custody, control and ownership.” Ans. 14
(citing Yarnall ¶ 4).
Appeal 2018-006059
Application 14/015,305

16
We note Lewis is directed to “[s]ystems and methods for integrating,
managing and using electronic and tangible data relating to animals,
especially data corresponding to official documentation.” Lewis (Abstract).
Yarnall is directed to an Internet based animal registration system for
registering information relating to an animal. See Yarnall (Title) and
Abstract. Thus, we find Yarnall to be analogous art to Lewis and the
claimed invention.
Appellants contend that the combination of Lewis and Yarnall is
based upon hindsight reasoning and there is no evidence supporting the
conclusion of obviousness. Br. 9–10. We disagree and add the following
for emphasis.
First, as explained in In re McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of Appellant’s invention and does not include
knowledge gleaned only from the Appellant’s disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Final Action and Examiner’s Answer.
See Final Act. 25–26; Ans. 13-15. To the extent that the Examiner relies on
the knowledge of one of ordinary skill in the art to combine the teachings of
Appeal 2018-006059
Application 14/015,305

17
the references, this practice is consistent with current case law. For
example, the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Ans. 13–14. Thus, we agree with the
Examiner’s findings and legal conclusions regarding Rejection R3 of
claim 19.
4. Rejection R2 of Independent Claim 22
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of independent claim 22 under § 103, we
sustain the Examiner’s rejection of these claims. Arguments not made are
waived.
Appeal 2018-006059
Application 14/015,305

18
CONCLUSIONS
(1) The Examiner did not err with respect to anticipation Rejection
R1 of claims 1, 5–11, 13, 15, 17, 18, 20, and 21 under 35 U.S.C. § 102(b),
and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 2, 3, 14, 16, 19, and 22 under 35 U.S.C.
§ 103(a) over the cited prior art combinations of record, and we sustain the
rejections.
DECISION SUMMARY
Claims
Rejected
35
U.S.C.
§
Basis /
References
Affirmed Reversed
1, 5–11, 13, 15,
17, 18, 20, 21
102(b) Lewis 1, 5–11, 13, 15,
17, 18, 20, 21

2, 3, 14, 16, 22 103(a) Lewis,
Wood
2, 3, 14, 16, 22
19 103(a) Lewis,
Yarnall
19
Overall
Outcome
1–3, 5–11, 13–22
FINALITY AND 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED