Ex Parte Katzman et al

Patent Trial and Appeal Board

Dec 11, 2012

11190347 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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6
Ex parte WENDY KATZMAN and JONATHAN L. WEIL 7
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9
Appeal 2011-003371 10
Application 11/190,347 11
Technology Center 3600 12
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 16
BIBHU R. MOHANTY, Administrative Patent Judges. 17
18
FETTING, Administrative Patent Judge. 19
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21
DECISION ON APPEAL22
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1
STATEMENT OF THE CASE1 2
Wendy Katzman and Jonathan L. Weil (Appellants) seek review 3
under 35 U.S.C. § 134 of a final rejection of claims 1-18, the only claims 4
pending in the application on appeal. We have jurisdiction over the appeal 5
pursuant to 35 U.S.C. § 6(b). 6
The Appellants invented a way to sell automatic external defibrillators 7
(AEDs) to individuals over the counter (OTC) without a prescription (Spec. 8
1:7-10). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1, which is reproduced below (bracketed matter and some 11
paragraphing added). 12
1. A method of distributing over-the-counter automatic external 13
defibrillators comprising: 14
[1] selling an over-the-counter automatic external defibrillator 15
to a purchaser 16
without a prescription 17
and 18
without requiring owner contact information 19
from the purchaser 20
at the time of purchase; 21
[2] including 22
with the over-the-counter automatic external 23
defibrillator 24
instructions 25
for sending owner contact information 26
to a repository of such information; 27
and 28
[3] arranging for the seller 29

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 4, 2010) and Reply Brief (“Reply Br.,” filed October 11,
2010), and the Examiner’s Answer (“Ans.,” mailed August 10, 2010).
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of the over-the-counter automatic external 1
defibrillator 2
to provide purchaser contact information 3
the seller may have 4
in the event of a need 5
to provide important information 6
to the purchaser/owner. 7
The Examiner relies upon the following prior art: 8
James US 2005/0119941 A1 Jun. 2, 2005 9
Estruth US 2005/0246233 A1 Nov. 3, 2005 10
Claims 1 and 14 stand rejected under 35 U.S.C. § 101 as directed to 11
non-statutory subject matter. 12
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable 13
over Estruth and James. 14
ISSUES 15
The issue of statutory subject matter turns on whether an automatic 16
external defibrillator is a device. 17
The issues of obviousness turn on whether either reference describes 18
limitation [3] of arranging for the seller of the over-the-counter automatic 19
external defibrillator to provide purchaser contact information the seller may 20
have in the event of a need to provide important information to the 21
purchaser/owner. 22
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Estruth 5
01. Estruth is directed to the sale and use of consumer products and 6
services requiring professional input. Estruth, para. 0002. 7
02. Estruth provides a consumer product or consumer service at a 8
retail outlet available for purchase by a consumer and ultimately 9
purchased by a consumer. Instructions provided with the product 10
or service directs the consumer to take the product or service to a 11
professional for activation. Following activation of the product or 12
service by the professional, the product or service may then be 13
used by the consumer. The product or service may not be usable 14
as purchased, but only become usable upon activation by the 15
professional. In an alternative embodiment, the product or service 16
may be composed of two parts, each being necessary for the 17
product or service to be usable by the consumer. One component 18
of the product or service may be purchased at a retail outlet and 19
the other may be provided by the professional. The professional 20
may then combine the two components for subsequent activation. 21
Estruth, paras. 0008-0009. 22
03. For example, upon reaching a veterinarian, the consumer may 23
present a previously purchased chip and the pet to the veterinarian. 24
The veterinarian then implants or installs the chip into the pet. As 25
the consumer selects the appropriate chip, such chip may contain 26
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information relating to the health, medical history, and other 1
information regarding the pet. 2
James 3
04. James is directed to provision of medical after sales support to a 4
patient or to someone associated with a patient, such as a carer, 5
pharmacist, relative or doctor, for a patient undergoing or 6
prescribed for treatment with a pharmaceutical drug, medicament, 7
medical device or other medical product. James, para. 0001. 8
05. It would be desirable for a patient or carer to be able to receive 9
periodic reminders relating to the treatment with the product, or to 10
receive other notifications relating to the product. Moreover, it 11
would be desirable for the patient to be able to receive reminders 12
or notifications whilst remaining anonymous. Furthermore, it 13
would be desirable to be able to provide a mechanism for 14
establishing anonymous proof of identity in controlling access to 15
or dispensing of medications. James, para. 0010. 16
06. The user identifier or contact address is stored by a web host for 17
the manufacturer, and provides a contact point or gateway 18
between the web host and the user of a packaged product having 19
an associated product code. By comparing a code reported by any 20
person with a code stored by the web host in a product code 21
database, to determine whether the reported code is a valid code, 22
the web host can identify the product and retrieve information 23
about the product from stored records. James, para. 0024. 24
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ANALYSIS 1
Claims 1 and 14 rejected under 35 U.S.C. § 101 as directed to non-statutory 2
subject matter. 3
We cannot support the Examiner’s finding that “the steps do not recite 4
any particular machine or apparatus” (Ans. 4) because as Appellants argue at 5
Appeal Brief page 7, the claims explicitly recite an automatic external 6
defibrillator. Thus, irrespective of whether the claims might fail under a 7
different theory, Examiner’s clear error in fact finding cannot support this 8
rejection. The rejection analysis is ambiguous as to whether the remaining 9
claims were included. To the extent they were, Examiner’s findings are 10
equally erroneous as to the dependent claims. 11
Claims 1-18 rejected under 35 U.S.C. § 103(a) as unpatentable over Estruth 12
and James. 13
We agree with Examiner’s findings that the independent claims are no 14
more than the application of James’s notification to Estruth’s sales process. 15
We are not persuaded by the Appellants’ argument that neither reference 16
describes limitation [3] of arranging for the seller of the over-the-counter 17
automatic external defibrillator to provide purchaser contact information the 18
seller may have in the event of a need to provide important information to 19
the purchaser/owner. Appeal Br. 8-10. 20
Examiner applied James for this limitation and the claim only requires 21
an arrangement, not the actual provision of textual information. Setting 22
aside the fact that the information involved is deserving of no patentable 23
weight, see In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004), James at least 24
provides for this. FF 04-06. Appellants argue it is information submitted by 25
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the purchaser in James. Appeal Br. 7-8. When read in the context of 1
James’s invention, it is clear the purchaser information is submitted as the 2
arrangement mechanism for the supplier providing information. Now, 3
before Appellants respond they are discussing the purchaser contact 4
information rather than the product information of limitation [3], again, the 5
nature of the information deserves no patentable weight, and in any event, 6
the James’s web page which collects contact information, i.e., a code, passes 7
it on to the web host. Certainly Estruth also shows it was also predictable to 8
pass contact information to the supplier to provide information, although 9
limitation [3] does not specify to whom such information might be 10
conveyed. In view of all this, it was certainly predictable to at least arrange 11
for the possibility of conveying contact information. 12
CONCLUSIONS OF LAW 13
The rejection of claims 1 and 14 under 35 U.S.C. § 101 as directed to 14
non-statutory subject matter is improper. 15
The rejection of claims 1-18 under 35 U.S.C. § 103(a) as unpatentable 16
over Estruth and James is proper. 17
DECISION 18
The rejection of claims 1-18 is affirmed. 19
No time period for taking any subsequent action in connection with this 20
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 21
§ 1.136(a)(1)(iv) (2011). 22
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AFFIRMED 24
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hh 26