Ex Parte Torres

Patent Trial and Appeal Board

Jun 26, 2017

14515410 (P.T.A.B. Jun. 26, 2017)

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.
14/515,410 10/15/2014 Aurora I. Torres 46694-701.201 5451
21971 7590 06/28/2017
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
CONLEY, SEAN EVERETT
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
patentdocket @ wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AURORA IRENE TORRES
Appeal 2016-006955
Application 14/515,410
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals the final rejections of claims 1—11 and 21—30
under 35 U.S.C. § 134(a). We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention relates to systems for cleaning, disinfecting,
and/or sanitizing children’s objects (Spec. 1,12). The system was
developed to reduce and/or prevent the spread of infectious pathogens from
1 Appellant identifies the real party in interest as “Aurora I. TORRES”
(Appeal Br. 3).
Appeal 2016-006955
Application 14/515,410
environmental objects, such as children’s toys, to children and/or between
children (id. ).
Claim 1 is illustrative (emphasis added):
1. A system for disinfecting children’s objects comprising:
a. a first basket comprising one or more holes
configured to allow fluid to flow between an interior and an
exterior of the first basket;
b. a liquid comprising glutaraldehyde, provided that
the liquid is at or about room temperature;
c. a container configured to hold the liquid and the
first basket such that the liquid enters the first basket when the
first basket is at least partially submerged in the liquid; and
d[.] a children’s object comprising a toy, a trinket, or a
plaything, provided that:
(i) the children’s object is placed in the first
basket and at least partially submerged in
the liquid held in the container; and
(ii) the children’s object is not a medical
instrument, a dental instrument, a surgical
instrument, or a physician’s instrument.
Appeal Br. Claims App’x 16.
Appellant appeals the following rejections to the appealed claims:
I. Claims 1 and 4 as unpatentable under 35 U.S.C. § 103(a) over
Monch,2 in view of Martin3 (Final Act. 4—5).
2 US 4,732,187, issued Mar. 22, 1988.
3 US 4,469,614, issued Sept. 4, 1984.
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II. Claims 2, 3, 6—11, and 24—30 as unpatentable under 35 U.S.C.
§ 103(a) over Monch, Martin, and further in view of Hauze4
(Final Act. 5—6).
III. Claims 5, 22, and 23 as unpatentable under 35 U.S.C. § 103(a)
over Monch, Martin, and further in view of Grieco5 (Final
Act. 6).
IV. Claim 21 as unpatentable under 35 U.S.C. § 103(a) over
Monch, Martin, and further in view of Wu6 (Final Act. 7).
Appellant’s arguments focus on the subject matter of independent
claim 1 of rejection (I) (Appeal Br. 9—14; Reply Br. 5—10). Any claims not
argued separately with regard to rejection (I) will stand or fall with our
analysis regarding claim 1.
FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding Monch and
Martin are located on pages 4 to 5 of the Final Office Action. The Examiner
finds that Monch discloses all the limitations of the system for disinfecting
children’s objects as recited in claim 1, except that Monch fails to disclose
the type of disinfectant used in the system (Final Act. 4). The Examiner
finds Martin teaches that it was conventionally known to use a disinfectant
solution comprising glutaraldehyde and the fungicide, ortho-phenyl phenol
{id. at 5).
4 US 4,798,292, issued Jan. 17, 1989.
5 US 3,801,279, issued Apr. 2, 1974.
6 US 6,436,716 Bl, issued Aug. 20, 2002.
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Application 14/515,410
The Examiner determines that it would have been obvious for the
ordinary skilled artisan to use Martin’s conventional disinfectant solution at
room temperature in a system for treating articles, which are contained in a
basket and submerged in the disinfectant {id.).
Appellant argues that the rejection is improper because Monch merely
discloses a device for disinfecting endoscopes, yet claim 1 specifically
excludes disinfection of medical instruments (Appeal Br. 9—10). In
particular, Appellant argues that “neither Monch nor Martin teach a system
for disinfecting children’s objects that fall into the category of objects that
children play with: ‘a toy, a trinket, or a plaything, provided that: ... the
children’s object is not a medical instrument, a dental instrument, a surgical
instrument, or a physician’s instrument,”’ as required by claim 1 {id. at 9;
see also id. at 11).
Appellant further argues that the Examiner’s interpretation of claim 1
“goes beyond broadest reasonable interpretation and interprets ‘children’s
object’ in a broadest possible way” (Reply Br. 7). According to Appellant,
the Examiner’s position “ignores the description of the Specification and the
clear and unmistakable disavowal of the claims, and interprets the claimed
‘children’s object’ as an object that can be handled and played with by a
child” {id.).
Appellant’s arguments are not persuasive.
Claim 1 is an apparatus claim and Appellant does not challenge the
Examiner’s finding that the claimed structural components of the system are
taught by the combination of Monch and Martin (Ans. 3, 4). The courts
have long held that the recitation of a material intended to be worked upon
by a claimed apparatus does not differentiate the claimed apparatus structure
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Application 14/515,410
from the structure of a prior art apparatus. Roberts v. Ryer, 91 U.S. 150, 157
(1875); In re Hughes, 49 F.2d 478, 479 (CCPA 1931); In re Rishoi, 197 F.2d
342, 345 (CCPA 1952). In this instance, children’s objects and objects
which are medical, dental, surgical or physician’s instruments are not
excluded by claim 1 if they are materials intended to be disinfected by the
claimed apparatus. See Roberts, 91 U.S. at 157; Hughes, 49 F.2d at 479;
Rishoi, 197 F.2d at 345. In other words, the inclusion of a children’s object
comprising a toy, a trinket, or a plaything in the apparatus of claim 1 merely
recites an intended use of the apparatus, and the apparatus taught by Monch
and Martin would have been capable of treating a children’s object.
Therefore, Appellant has not shown persuasively that it was erroneous or
unreasonable for the Examiner to determine that the claimed structural
components of the system would have been rendered obvious by the
combination of Monch and Martin.
Appellant further argues that there is no motivation to combine Martin
and Monch because Martin teaches that the disclosed disinfectant solution in
diluted form has no adverse ‘“effect on the skin in a ten minute immersion’
. . .” and “the device taught by M[o]nch prevents contact with a user’s skin”
(Appeal Br. 12 (citing Martin 2:44-45)). Appellant further argues that the
Examiner’s proposed modification would “‘[amount] to extra work and
greater expense for no apparent reason’” (Appeal Br. 12). Appellant asserts
that the Examiner engaged in improper hindsight because “[t]he motivation
for the proposed modification does not come from M[o]nch or knowledge in
the art, but is simply gleaned from the present application” (Appeal Br. 13).
Appellant’s arguments are not persuasive.
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Application 14/515,410
The Examiner’s stated rejections are not based on impermissible
hindsight, but rather the teachings of the prior art (see Final Act. 4—5).
Appellant’s arguments that Monch’s device prevents contact of a
disinfecting fluid with a user’s skin are not substantiated by the evidence of
record. Likewise, the evidence of record does not support Appellant’s
characterization of the Examiner’s proposed modification as requiring
‘“extra work and greater expense’” (id.). Attorney argument cannot take the
place of evidence in the record.
Even assuming Appellant is correct that Monch prevents contact with
a user’s skin, Appellant’s argument fails to address the combined teachings
of the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The combination
of the art teaches that Martin’s conventional disinfectant solution is a
suitable disinfectant in Monch’s system for treating articles. Accordingly,
one of ordinary skill in the art would have a reason for combining the
teachings of Martin and Monch.
Appellant argues that there is a long-felt need for a system to reduce
and/or prevent the spread of infectious pathogens from environmental
objects (Appeal Br. 14 (citing Spec. 2, 3)). Appellant further argues that
others have failed to solve this long-felt need (Appeal Br. 14 (citing Spec.
112, 3)).
Appellant’s arguments are not persuasive because they are not
substantiated by the evidence of record. In particular, || 2 and 3 of the
Specification lack any demonstration that the claimed invention has solved
any such long-felt need. Although Appellant asserts that the claimed system
was developed “to reduce and/or prevent the spread of infectious pathogens
from environmental objects, for example children’s toys, to children and/or
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Application 14/515,410
between children,” Appellant fails to provide any data to support these
assertions of an actual reduction and/or prevention (Spec. 12).
Appellant has not shown persuasively that it was erroneous or
unreasonable for the Examiner to conclude that it would have been obvious
for the ordinary skilled artisan to use Martin’s conventional disinfectant
solution in Monch’s system for treating articles.
Therefore, on this record, we affirm the Examiner’s § 103 rejection of
claims 1 and 4 over Monch and Martin.
CONCLUSION
Accordingly, on this record and for the above reasons, we sustain the
35 U.S.C. § 103 rejections (I)—(IV) of claims 1—11 and 21—30 over the cited
prior art.
DECISION
The Examiner’s § 103 rejections are 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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