Ex Parte Tsengas

Patent Trial and Appeal BoardNov 29, 2012

12334450 (P.T.A.B. Nov. 29, 2012)

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. 12/334,450 12/13/2008 Steven Tsengas OP-2153 8289 33055 7590 11/29/2012 PATENT, COPYRIGHT & TRADEMARK LAW GROUP 4199 Kinross Lakes Parkway Suite 275 RICHFIELD, OH 44286 EXAMINER PHAM, TOAN NGOC ART UNIT PAPER NUMBER 2684 MAIL DATE DELIVERY MODE 11/29/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEVEN TSENGAS ____________ Appeal 2012-004354 Application 12/334,450 Technology Center 2600 ____________ Before ERIC B. CHEN, BRUCE R. WINSOR, and ANDREW CALDWELL, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-3 and 8-11, which constitute all the claims pending in this application. Claims 4-7 are cancelled. Reply Br. 7. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and institute a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b). Appeal 2012-004354 Application 12/334,450 2 STATEMENT OF THE CASE Appellant’s “invention is directed generally to pet accessories and, more particularly, to feeders, shelters, and litter boxes that are programable [sic] for interaction with an identified pet.” Spec. 2:2-4. Claims 1 and 8, which are illustrative of the invention, read as follows: 1. In an improved automated cat litter box having a litter chamber, a motorized comb or rake drive mechanism for removing clumps from said litter chamber, and a means for cycling the drive mechanism, the improvement comprising: a cat proximity sensor for sensing the relative position of a cat about or within said litter chamber, said cat proximity sensor comprising a radio frequency recognizable ID [(identification)] tag device on or worn by the cat; and a proximity sensor in electronic control with said cat proximity sensor in which a radio frequency control circuit is activated upon the sensing of motion first, with the cycle subsequently accurately responsive to the presence and/or position of aid [sic: said] recognizable ID tag. App. Br. 12. 8. A system to discriminate between multiple pets’ access to monitored structures, said system comprises: a structure comprising a specific coded radio frequency sensor and a proximity sensor in electronic control with said specific coded radio frequency sensor; and a plurality of corresponding transmitter tags each for removable carry or attachment on pet collars; [ ]wherein upon said proximity sensor sensing the relative position of a pet about said structure said [sic] a radio frequency signal is thereby activated for subsequent recognition of said specific coded radio frequency sensor, thereby allowing or denying access to said structure. App. Br. 13. Appeal 2012-004354 Application 12/334,450 3 Claim 8 stands rejected under 35 U.S.C. § 102(b) as anticipated by Small (US 6,297,739 B1; Oct, 2, 2001). Ans. 6. Claims 9-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Small. Ans. 7. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tamba (US 6,079,364; June 27, 2000) and Small. Ans. 4-5. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Tamba and Goehring (US 7,685,966 B2; Mar. 30, 2010; effectively filed Nov. 3, 2006). Ans. 5. Rather than repeat the arguments here, we make reference to the Briefs (App. Br., Reply Br.) and the Answer (Ans.) for the respective positions of Appellant and the Examiner. Only those arguments actually made by Appellant have been considered in this decision. Arguments that Appellant did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUES The pivotal issues presented by Appellant’s contentions are as follows: Did the Examiner err in finding that Small discloses the invention recited in claim 8, reproduced supra? Did the Examiner err in finding that the combination of Tamba and Small teaches or suggests the invention recited in claim 1, reproduced supra? Appeal 2012-004354 Application 12/334,450 4 Did the Examiner err in finding the combination of Tamba and Goehring teaches or suggests all of the elements of claim 2, including those recited in claim 1, reproduced supra, from which claim 2 depends? ANALYSIS Claim 8 The Examiner finds that Small discloses all of the limitations of claim 8. Ans. 6 (citing Small col. 3, ll. 5-20; col. 4, ll. 1-65). Appellant contends that Small does not disclose “a cat litter box, having a sensor to detect an approaching animal.” App. Br. 7. As pointed out by the Examiner, Ans. 7, claim 8 does not recite a cat litter box. Accordingly, the contention is not commensurate with the scope of the claim and is, therefore, unpersuasive. Appellant further contends, for the first time in the Reply Brief, that Small does not disclose a “structure” because Small does not disclose a cat litter box and because Small does not use the word “structure.” Reply Br. 8. This argument is not timely and is waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). Even if we were to consider the argument, it is unpersuasive. The absence of the word “structure” from Small’s disclosure is of no significance because anticipation is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). One of ordinary skill in the art would have understood Small’s secured enclosure (20), Small col. 4, ll. 1-3, see also Fig. 1, to be a “structure.” Furthermore, Appellant’s Specification states that monitored Appeal 2012-004354 Application 12/334,450 5 structures encompass doors, Spec. 7:11-13, and Small discloses that secured enclosure (20) includes an animal door (50), Small Fig. 1; col. 4, ll. 1-3. Appellant has failed to persuade us of error in the rejection of claim 8, and the rejection is sustained. Claims 9-11 Claims 9-11 depend from claim 8. Appellant contends claims 9-11 are allowable because claim 8 is allowable. App. Br. 9; Reply Br. 9-10. This contention is unpersuasive for the reasons discussed supra regarding claim 8. Appellant appears to further contend, for the first time in the Reply Brief, that the rejection of claims 9-11 is in error because no secondary reference is cited. This contention is not timely and is waived. See Borden, 93 USPQ2d at 1474. Even if we were to consider the contention, it is unpersuasive, as it is no more than a general allegation of error without identifying any specific deficiency in the rejection. Additionally, we note that a single reference rejection under 35 U.S.C. § 103(a) is not inherently improper. See MPEP § 706.02(j) (8th ed., 2001; rev. 6, 2007). Appellant has failed to persuade us of error in the rejection of claims 9-11, and the rejection is sustained. Claim 1 Adopting the argument made for claim 8, see supra, Appellant contends that neither Small nor Tamba “teach any type of sensor that would permit or restrict an animal access to the litter box.” App. Br. 8. More particularly, Appellant appears to contend that Small does not teach a litter box, see App. Br. 7 (discussing claim 8), and “Tamba merely discloses a litter box that may be hermetically sealed . . . the sealing lid of the Tamba Appeal 2012-004354 Application 12/334,450 6 invention is not connected to any sensor which would permit or restrict access to a pet,” App. Br. 8. As pointed out by the Examiner, Tamba is relied on for teaching a litter box having a sensor for detecting the presence of a cat, Ans. 8 (citing Tamba col. 3, ll. 35-39; col. 7, ll. 39-47), and Small is relied upon for teaching: the claimed proximity sensor structure of claim 1. Small discloses a cat proximity sensor (82) for sensing the cat when the cat comes within range of the door (50), the cat including the recognizable ID tag (94) on or worn by the cat, and a proximity sensor in electronic control with said cat proximity sensor in which a radio frequency control circuit (90, 92) is activated upon the sensing of motion first, with the cycle subsequently accurately responsive to the presence and/or position of said recognizable ID tag ([Small] col. 4, lines 1-65). Ans. 8. “[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). Appellant’s argument is unpersuasive because it attacks the references individually rather than addressing the combination articulated by the Examiner. Appellant contends that Tamba does not use a pressure sensor or a proximity sensor using RF-ID to sense the presence of a cat. Reply Br. 4. This contention is not commensurate with the grounds of rejection. See Keller, 642 F.2d at 426. The Examiner relies on Tamba for teaching that a litter box may have an associated sensor for detecting the presence of a cat, Ans. 4-5, 8, but relies on Small, Ans. 5, 8, for teaching that the sensor may be a proximity sensor. Appeal 2012-004354 Application 12/334,450 7 Appellant contends that the combinations made by the Examiner are exercises of impermissible hindsight because the references fail to teach or suggest every element of the claim and because there is no affirmative teaching in the prior art to make the proposed combination. App. Br. 9-11; see also Reply Br. 5-6. To the extent that Appellant has made specific contentions regarding claimed elements missing from claim 1, those contentions are addressed supra. Appellant’s further argument regarding the lack of an affirmative suggestion for combination of the references, App. Br. 9-11, is merely a paraphrasing of the teaching, suggestion, or motivation test. “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). However, in response to the Examiner’s Answer, Appellant further contends that the combination made in “the Examiner’s Answer relied on Appellant’s remote sensing litter tray to allegedly support the combination of Tamba and Small. However, the combination of these two uses is absent from the cited art and is only present in Appellant’s [S]pecification and claims.” Reply Br. 5. We do not agree with Appellant that a combination of the teaching of two references is improper unless one of the references already discloses the combination. However, we do agree that the rationale stated by the Examiner: “at the time of the invention, it would have been obvious to one of ordinary skill in the art to utilize the radio frequency device worn on the cat to correctly identify and differentiate different pets being sensed[,] and for selectively permit [sic] the ingress/egress of the Appeal 2012-004354 Application 12/334,450 8 pets,” Ans. 8, is little more than a conclusory restatement of the claim, and amounts to hindsight. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” . . . . however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, we will not sustain the rejection of claim 1. Claim 3 Claim 3 depends from claim 1 and was not separately argued with particularity in the Appeal Brief, App. Br. 8. Appellant contends, for the first time in the Reply Brief, that the invention of claim 3 fulfills a long felt need. The argument is untimely and is waived. See Borden, 93 USPQ2d at 1474. Even if we were to consider the contention it is unpersuasive, as it amounts to little more than attorney argument with no evidence on the record. Establishing long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution. In re Gershon, 372 F.2d 535, 538 (CCPA 1967); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). However, because of its dependency from claim 1, discussed supra, we will not sustain the rejection of claim 3. Appeal 2012-004354 Application 12/334,450 9 Claim 2 Appellant contends that being dependent on claim 1, claim 2 . . . is capable of identifying the location of a cat outside the litter box or litter box [sic] or litter chamber. . . . Goehring . . . fails to teach a sensor capable of detecting whether an animal is near, outside, in the presence of, or inside [Goehring’s] food bowl. App. Br. 8-9. As pointed out by the Examiner, Goehring does disclose a sensor (20) capable of identifying the location of a cat outside Goehring’s lidded pet food dish. Ans. 8 (citing Goehring col. 5, ll. 39-52). Goehring states that “as the cat 6 would approach the dish 10 and be sensed to be within the perimeter 30 of operation, its tag 8 would similarly trigger a signal 28 from the sensor 20.” Goehring col. 5, ll. 41-43 (emphases added). That said, however, we agree with the broader point made by Appellant’s contention, i.e., that in combining Tamba and Goehring, the Examiner has made no factual findings identifying all of the limitations recited in claim 1. In particular, the Examiner has not made findings identifying where Tamba and Goehring teach or suggest the limitations found to have been taught or suggested by Small with regard to claim 1. Appellant also contends that Examiner’s rationale for combining references is inadequate. App. Br. 9-10; Reply Br. 6. We agree for the reasons similar to those discussed supra regarding claim 1. Accordingly, we will not sustain the rejection of claim 2. NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b) Claims 1 and 3 Claims 1 and 3 are rejected on a new ground of rejection under 35 U.S.C. § 103(a) as unpatentable over Tamba and Small. Appeal 2012-004354 Application 12/334,450 10 Regarding claim 1, we adopt the Examiner’s findings of fact, Ans. 4- 5, as our own, but do not adopt the Examiner’s stated rationale for combining Small and Tamba. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. We conclude that it would have been obvious to combine Small’s proximity sensor (82), recognizable ID tag (94), and radio frequency control circuit (90, 92), Small Fig. 1; col. 4, ll. 1-65, with Tamba’s automated litter box. One of ordinary skill in the art would have recognized that such a combination would predictably improve Tamba’s litter box, see Tamba Fig. 3, in the same way that it improves Small’s secured enclosure (20) having a door (50), by only allowing access to the litter box to a set of one or more cats, see Small col. 1, ll. 63-67, and the application of such a combination would have been within the skill of the person of ordinary skill in the art. Regarding claim 3, we adopt the Examiner’s findings of fact regarding claim 1, Ans. 4-5, and claim 3, Ans. 5, as our own. We conclude that the combination of Tamba and Small would have been obvious with regard to claim 3 for the same reason as articulated supra regarding claim 1. Claim 2 Claim 2 is rejected on a new ground of rejection under 35 U.S.C. § 103(a) as unpatentable over Tamba, Small, and Goehring. We adopt the Examiner’s findings of fact regarding claim 1, Ans. 4-5, and claim 2, Ans. 5, as our own. We conclude that the combination of Small and Tamba would have been obvious with regard to claim 2 for the same reason as articulated Appeal 2012-004354 Application 12/334,450 11 supra regarding claim 1. We further find that it would have been obvious to combine Goehring’s cat proximity sensor capable of identifying the location of a cat outside the litter box with the combination of Tamba and Small, because such a combination would have been merely an obvious combination of familiar elements according to known methods that it does no more than yield predictable results, KSR, 550 U.S. at 416, that could have been implemented by a person of ordinary skill, id. at 417. ORDER The decision of the Examiner to reject claim 8 under 35 U.S.C. § 102(b) as anticipated by Small is affirmed. The decision of the Examiner to reject claims 9-11 under 35 U.S.C. § 103(a) as unpatentable over Small is affirmed. The decision of the Examiner to reject claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable over Tamba and Small is reversed. The decision of the Examiner to reject claim 2 under 35 U.S.C. § 103(a) as unpatentable over Tamba and Goehring is reversed. We enter a new ground of rejection for claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable over Tamba and Small. We enter a new ground of rejection for claim 2 under 35 U.S.C. § 103(a) as unpatentable over Tamba, Small, and Goehring. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of Appeal 2012-004354 Application 12/334,450 12 the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 37 C.F.R. § 41.50(b). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) babc