Ex Parte Grossman et alDownload PDFPatent Trial and Appeal BoardNov 30, 201613715916 (P.T.A.B. Nov. 30, 2016) 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. 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). 2 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 3 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. 4 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 5 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 6 Copy with citationCopy as parenthetical citation