Ex Parte Grossman et al

Patent Trial and Appeal Board

Nov 30, 2016

13715916 (P.T.A.B. Nov. 30, 2016)

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.
13/715,916 12/14/2012 Tovi Grossman AUTO/1249US 7542
107456 7590 12/02/2016
Artegis Law Group, LLP
John Carey
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
EXAMINER
BOST, DWAYNE D
ART UNIT PAPER NUMBER
2699
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
algdocketing @ artegislaw. com
kcruz @ artegislaw.com
mmccauley @ artegislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOVI GROSSMAN, GEORGE FITZMAURICE, ANNE AGUR,
and CHRISTIAN HOLZ
Appeal 2016-000601
Application 13/715,9161
Technology Center 2600
Before JASON V. MORGAN, BRUCE R. WINSOR, and
KEVIN C. TROCK, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1 and 4—22. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 2 and 3 are cancelled.2
We AFFIRM.
1 Appellants indicate the Real Party in Interest is Autodesk, Inc. App. Br. 3.
2 Final Act. 2.
Appeal 2016-000601
Application 13/715,916
Invention
The claims are directed to electronic devices capable of being
implanted beneath the skin of a human user. Abstract.
Exemplary Claim
Exemplary claim 1 is reproduced below with disputed limitations
emphasized:
1. A device configured to be implanted beneath human
skin, the device comprising:
a processor;
a first input device coupled to the processor and adapted
to receive direct input from a user;
a first output device coupled to the processor; and
a protective packaging disposed around at least the first
input device, the first output device, and the processor, wherein
the protective packaging prevents bodily fluids from contacting
the device.
Rejections
Claims 1, 7, 9-13, 16, and 17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Celentano et al. (US 2010/0167385 Al; July 1,
2010) and Feingold (US 4,871,351; Oct. 3, 1989).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Celentano, Feingold, and Fridez et al. (US 2011/0270025
Al; Nov. 3,2011).
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Celentano, Feingold, and Strother et al.
(US 2005/0278000 Al; Dec. 15, 2005).
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Appeal 2016-000601
Application 13/715,916
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Feingold, Strother, and Thrope et al. (US 2007/0032837
Al; Feb. 8, 2007).
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Celentano, Feingold, and Fang et al. (US 7,447,533 Bl;
Nov. 4, 2008).
Claims 14 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Celentano, Feingold, and Morgan et al.
(US 2008/0300597 Al; Dec. 4, 2008).
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Celentano, Feingold, and Faltys et al. (US 6,980,864 B2;
Dec. 27, 2005).
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Celentano, Feingold, and Thrope.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Celentano, Feingold, Thrope, and Swerdlow et al. (US
2004/0106955 Al; June 3, 2004).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Celentano and Zhang et al. (US 2005/0288600 Al; Dec.
29, 2005).
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable overMandell (US 2006/0122661 Al; Jun. 8, 2006), Feingold,
and Yang et al., Distributed Recognition of Human Actions Using Wearable
Motion Sensor Networks, Journal of Ambient Intelligence and Smart
Environments, vol. 1, no. 2, 103—15 (2009) (the version relied upon by the
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Appeal 2016-000601
Application 13/715,916
Examiner has page numbers 1—13 and is available at https://people.eecs.
berkeley.edu/~yang/paper/JAISE08-AllenYang.pdf).
ANALYSIS
We have reviewed the Examiner’s rejections and the evidence of
record in light of Appellants’ arguments that the Examiner has erred. We
disagree with Appellants’ arguments and conclusions. We adopt as our
own: (1) the findings and reasons set forth by the Examiner in the Office
Action from which this appeal is taken and (2) the findings and reasons set
forth in the Examiner’s Answer. We concur with the conclusions reached by
the Examiner and further highlight specific findings and argument for
emphasis as follows.
Independent Claim 1
Appellants contend the Examiner erred in rejecting independent claim
1, because the combination of Celentano and Feingold does not teach or
suggest “a protective packaging disposed around at least the first input
device, the first output device, and the processor, wherein the protective
packaging prevents bodily fluids from contacting the device.” App. Br. 11—
12; Reply Br. 6—7. Appellants argue that the keypad and display (input and
output device) taught by Feingold are kept outside the body of the patient
and that sealing the keypad and display in a protective titanium case would
prevent the user from operating them. Id. Appellants also argue that
hermetically sealing Celentano’s user interface and display in Feingold’s
titanium case would render them inoperable and that one of ordinary skill
would never attempt to modify Celentano in such a manner. App. Br. 13;
Reply Br. 8—9.
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Appeal 2016-000601
Application 13/715,916
The Examiner, however, does not use the input and output devices
taught by Feingold to reject claim 1. Ans. 4. Rather, Feingold’s protective
packaging is used to modify the medical device taught by Celentano to
prevent bodily fluids from contaminating Celentano’s device. Id. The
Examiner finds that Celentano teaches a variety of input and output devices
that would not be precluded from use even if the entire device were encased,
e.g. in “a conventional audible indication device 36” or in a “conventional
vibratory device 38.” Ans. 5 (citing Celentano 145). The Examiner also
finds that Celentano also teaches a wireless communication module which
allows for direct user input through communication with an external
electronic device. Id. at 6 (citing Celentano, Fig. 1).
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Celentano and Feingold teaches or suggests “a protective
packaging disposed around at least the first input device, the first output
device, and the processor, wherein the protective packaging prevents bodily
fluids from contacting the device,” as recited in independent claim 1.
Therefore, we sustain the Examiner’s rejection of claim 1, as well as
independent claims 21 and 22, which recite similar subject matter.
Dependent Claims 4—20
Appellants have not presented separate, substantive arguments with
respect to dependent claims 4—20. See App. Br. 11—13. Therefore, we are
not persuaded the Examiner erred in rejecting these claims. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2014); In reLovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011)
(“We conclude that the Board has reasonably interpreted Rule 41.37 to
require applicants to articulate more substantive arguments if they wish for
individual claims to be treated separately.”). Accordingly, we sustain the
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Appeal 2016-000601
Application 13/715,916
Examiner’s rejection of claims 4—20.
DECISION
We AFFIRM the Examiner’s rejection of claims 1 and 4—22.
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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