Ex Parte Armingaud et al

Patent Trial and Appeal Board

Apr 26, 2016

11289340 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111289,340 11129/2005
77212 7590 04/28/2016
Cantor Colburn LLP - IBM Endicott
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Francois-Dominique G. Armingaud
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.
FR920040045US 1 7255
EXAMINER
CARLOS, ALVIN LEABRES
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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 FRANCOIS-DOMINIQUE G. ARMINGAUD,
FERNANDO D. PEDRAZZOLI, and JOSE M. VARONA BARBERO
Appeal2014-002606
Application 11/289,340
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 8-10 and 12-17 as unpatentable under 35 U.S.C.
§ 103(a) over Ramsay (US 6,230,135 Bl, iss. May 8, 2001), Raistrick
(US 5,971,279, iss. Oct. 26, 1999), and Gilfix (US 2005/0099306 Al, pub.
May 12, 2005). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-002606
Application 11/289,340
THE INVENTION
Appellants' invention is a tactile interface system to assist visually
impaired persons. Spec. 1. Claim 8, reproduced below, is illustrative of the
subject matter on appeal.
8. An information transmission arrangement comprising
a plurality of substantially independent transmission units each
automatically wirelessly transmitting information configured
to be received by a tactile interface, the information including
information conveyed via at least one other method by a
respective information system with which a respective one of
the plurality of substantially independent transmission units is
associated, wherein the independent transmission units are
located at specific locations and transmit pedestrian crossing
information, the tactile interface including:
an attaching means for attaching the tactile interface to at least
one digit of a user;
at least one tactile character reproduction device, located on the
attaching means and proximal to a sensitive region of the at
least one digit; and
a wireless reception means for receiving transmitted information
from each of the plurality of independent transmission means,
wherein the reception means provides the pedestrian crossing
information received from at least one of the plurality of
independent transmission means to the at least one tactile
character reproduction device;
wherein the reception means further includes a storage means for
storing information from the reception means and a playback
means for resending the stored information to the at least one
tactile character reproduction device, the playback means
including an interrupt means allowing the user to request a
replay of the stored information that has already been played
after it has been played, and wherein the storage means
temporarily stores the received information until new received
information is received by the reception means and the
interrupt means have not been activated.
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Appeal2014-002606
Application 11/289,340
OPil-JION
Appellants argue claims 8-10 and 12-17 as a group. Appeal Br. 3-5.
We select claim 8 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner finds that Ramsay discloses all of the elements of
claim 8 except for the claimed playback means and independent
transmission units. Final Action 4--5. The Examiner finds that the claim
language directed to pedestrian crossing information is a statement of
intended use. 1 Id. at 6-7. The Examiner finds that there is no novel and
unobvious functional relationship between the content of the information
that is transmitted and the transmitting unit. Id.
The Examiner relies on Raistrick as disclosing playback means as
claimed. Id. at 5. The Examiner concludes that it would have been obvious
to a person of ordinary skill in the art at the time of the invention to modify
Ramsay with Raistrick's disclosure of playback means. Id. According to
the Examiner, a person of ordinary skill in the art would have done this to
provide a tactile communicating system that allows users to conveniently
play back a communication at a later time. Id.
The Examiner relies on Gilfix as teaching a plurality of independent
transmission units each transmitting information received by a tactile
interface as claimed. Id. at 5---6. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to modify Ramsay and Raistrick with Gilfix's teaching of an
electronic travel aid system. Id. at 6. According to the Examiner, a person
1 The Examiner also finds that the content of such information constitutes
non-functional descriptive matter under In re Gulack, 703 F.2d 1381 (Fed.
Cir. 1983). Id. Appellants dispute this point. Appeal Br. 4. We do not need
to address this issue in order to dispose of this appeal.
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Appeal2014-002606
Application 11/289,340
of ordinary skill in the art would have done this to assist visually impaired
users orient themselves to their environment. Id.
Appellants argue that the prior art fails to disclose transmitting
pedestrian crossing information. Appeal Br. 4. Appellants challenge the
Examiner's finding regarding intended use, referring to the limitation as
directed to an "actual" not an "intended" use. Id., Reply Br. 2.
In response, the Examiner states that claim 8 is directed to an
apparatus claim and that Gilfix discloses the structural features of
independent transmission units except for the particular type of information
that is transmitted. Ans. 8. The Examiner explains that a particular type of
information, such as pedestrian crossing information, is a functional
recitation of an apparatus and, as such, is a recitation of intended use of the
claimed invention. Id. The Examiner cites In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997) for the proposition that a functional recitation of a
claimed apparatus must result in a structural difference between the claimed
apparatus and the prior art to patentably distinguish over the prior art.
Ans. 8. The Examiner states that, since the RFID transponders disclosed in
paragraphs 24--28 of Gilfix are capable of performing the function of
transmitting location information, Appellants' claim language is satisfied by
the prior art.
The Examiner is correct that a mere statement of intended use in an
apparatus claim cannot distinguish over a prior art apparatus that discloses
all the recited structural limitations and is capable of performing the recited
function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The
Examiner is also correct in characterizing the claim language directed to
pedestrian crossing information as a functional limitation. Ans. 8. There is
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Appeal2014-002606
Application 11/289,340
nothing intrinsically wrong with defining something by what it does rather
than what it is. In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). Such
functional language is an additional limitation in the claim and, therefore,
entitled to patentable weight. See K-2 Corp. v. Salomon S.A., 191 F.3d
1356, 1363 (Fed. Cir. 1999). Thus, a patent applicant is free to recite
features of an apparatus either structurally or functionally. Schreiber, 128
F.3d at 1478. Yet, choosing to define an element functionally, i.e., by what
it does, carries with it a risk. Id.
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
Swinehart, 439 F.2d at 213. "Where all structural elements of a claim exist
in a prior art product, and that prior art product is capable of satisfying all
functional or intended use limitations, the claimed invention is nothing more
than an unpatentable new use for an old product." Bettcher Ind., Inc. v.
Bunzl USA, Inc., 661F.3d629, 654 (Fed. Cir. 2011) (citing Schreiber, 128
F.3d at 1477).
In the instant case, Appellants provide neither evidence nor persuasive
technical reasoning to controvert the Examiner's reasonably held position
that Gilfix is capable of communicating pedestrian crossing information.
The Examiner successfully shifted the burden of proof on this issue to
Appellants. Swinehart, 439 F.2d at 213. Appellants have failed to carry
their burden to rebut the Examiner's position.
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Appeal2014-002606
Application 11/289,340
\Ve have considered the Appellants' other arguments and find them to
be without merit. We sustain the Examiner's unpatentability rejection of
claims 8-10 and 12-17.
DECISION
The decision of the Examiner to reject claims 8-10 and 12-17 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)(l )(iv).
AFFIRMED
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