Liss, Jonathan

Patent Trials and Appeals BoardDec 10, 2019

14698790 - (D) (P.T.A.B. Dec. 10, 2019)

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. 14/698,790 04/28/2015 Jonathan Liss 20780-002 7506 118072 7590 12/10/2019 Lance M. Pritikin Law Offices of Lance M. Pritikin 1801 Century Park East 24th Floor Los Angeles, CA 90067 EXAMINER WHITE, DENNIS MICHAEL ART UNIT PAPER NUMBER 1798 MAIL DATE DELIVERY MODE 12/10/2019 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 JONATHAN LISS ____________ Appeal 2019-003214 Application 14/698,790 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and MONTÉ T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–19, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed Apr. 28, 2015 (“Spec.”); Final Office Action dated Apr. 19, 2018 (“Final Act.”); Appeal Brief filed Nov. 16, 2018, as corrected Jan. 11, 2019 (“Br.”); and Examiner’s Answer dated Jan. 18, 2019 (“Ans.”). There is no reply brief. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Jonathan Liss as the real party in interest. Br. 3. Appeal 2019-003214 Application 14/698,790 2 CLAIMED SUBJECT MATTER Appellant’s disclosure relates to a tobacco smoke detector comprising a sensor and indicator coupled to the sensor for visually indicating the presence of tobacco smoke from cigars, cigarettes and the like, in a confined area. Spec. ¶¶ 1, 7, 8; Abstract. Claim 1 illustrates the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A disposable, self-contained, tobacco smoke detector for placement in a confined area occupiable by an occupant, the tobacco smoke detector comprising: a sensor incorporated with a reagent capable of undergoing at least one chemical reaction by interacting with one or more compounds unique to tobacco smoke; and an indicator coupled to the sensor for visually indicating the occurrence of the at least one chemical reaction by producing a detectable change in color; wherein the reagent is adapted such that when the reagent interacts with the one or more compounds unique to the tobacco smoke, the at least one chemical reaction formed thereby has the detectable color change made thereto, with the detectable color change being visible via the indicator so as to provide a visual indication of the tobacco smoke and thereby provide evidence of tobacco smoking by the occupant within the confined area. Br. 8 (key disputed claim language italicized and bolded). Appeal 2019-003214 Application 14/698,790 3 REFERENCE The Examiner relies on the following prior art reference as evidence in rejecting the claims on appeal: Name Reference Date Utley et al. (“Utley”) US 2011/0270053 A1 Nov. 3, 2011 REJECTION On appeal, the Examiner maintains (Ans. 3) the following rejection: claims 1–19 rejected under 35 U.S.C. § 102(a)(1) and/or § 102(a)(2) as being anticipated by Utley. Final Act. 3–5. OPINION Having considered the respective positions advanced by the Examiner and Appellant in light of this appeal record, we affirm the Examiner’s rejection based on the fact-finding and reasoning set forth in the Answer and Final Office Action, which we adopt as our own. We add the following primarily for emphasis. The Examiner rejects claims 1–19 as being anticipated by Utley. Final Act. 3–5. In response to the Examiner’s rejection, Appellant argues the patentability of independent claims 1 and 10 as a group but does not present separate argument for the patentability of any of the remaining claims subject to the Examiner’s rejection. We select claim 1 as representative and remaining claims 2–9 and 11–19 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines that Utley discloses a tobacco smoke detector satisfying all of the elements of claim 1 and, thus, concludes the reference anticipates the claim. Final Act. 3–4 (citing Utley ¶¶ 6, 7, 9, 43, Appeal 2019-003214 Application 14/698,790 4 52). Regarding the recitation “one or more compounds unique to tobacco smoke,” the Examiner relies on paragraph 43 of Utley for disclosing that element of the claim. Id. at 3. In particular, the Examiner finds that paragraph 43 of Utley discloses the use of “nicotine” as a target compound for the reagents for detecting components of cigarette smoke and, thus, nicotine is a compound, which falls within the scope of “one or more compounds unique to tobacco smoke,” as recited in the claim. Ans. 3. Appellant argues the Examiner’s rejection of claim 1 should be reversed because Utley does not disclose “a sensor incorporated with a reagent capable of undergoing at least one chemical reaction by interacting with one or more compounds unique to tobacco smoke,” as required by the claim. Br. 4–7. In particular, Appellant contends that because paragraph 43 of Utley discloses colorimetric sensor materials for detection of nicotine, arsenic, THC, and cocaine, and “these products do not uniquely source from tobacco smoke,” Utley does not disclose a device that detects compounds unique to tobacco smoke, as claimed. Id. at 5. Rather, Appellant contends Utley discloses “compound[s] merely associated with tobacco smoke” and “not necessarily unique to it.” Id. at 6. In essence, Appellant argues the Examiner’s rejection is improper because the Examiner’s interpretation of “one or more compounds unique to tobacco smoke” and, in particular, the term “unique” is overbroad and inconsistent with the ordinary meaning. Id. at 6. Appellant contends that the term “unique” should be construed narrowly to mean, for example, “being the only one” or “being the only one of its kind,” i.e., components only found in tobacco smoke, which Appellant maintains is consistent with the term’s ordinary meaning. Id. at 6. Appeal 2019-003214 Application 14/698,790 5 We do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection based on the fact-finding and reasoning provided by the Examiner at pages 3–4 of the Answer and pages 3–4 of the Final Office Action. In particular, we find a preponderance of the evidence supports the Examiner’s determination that Utley discloses all of the elements of claim 1, including “one or more compounds unique to tobacco smoke” (Utley ¶¶ 6, 7, 9, 43, 52), and that the Examiner’s interpretation of that element constitutes the broadest reasonable interpretation consistent with the Specification. During prosecution, claims are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must be read in light of the specification, as they would have been interpreted by one of ordinary skill in the art at the time of the invention. Id. As the Examiner points out (Ans. 3), the Specification does not provide a special definition or further describe the phrase “one or more compounds unique to tobacco smoke” or the term “unique” beyond the language recited in the claim. Appellant also does not identify or direct us to any description in Specification indicating that “unique” as recited in claim 1, must narrowly be construed to mean components only found in tobacco smoke or being the only one of its kind. Thus, absent any special or scope-limiting definition in the Specification, we find the Examiner correctly applied the broadest reasonable interpretation to mean a special or particular compound that is present in tobacco smoke. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[W]e look to the Appeal 2019-003214 Application 14/698,790 6 specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.”). Moreover, applying the broadest reasonable interpretation of the recitation “one or more compounds unique to tobacco smoke,” we discern no reversible error in the Examiner’s finding that Utley discloses that element of the claim. In particular, we find a preponderance of the evidence supports the Examiner’s finding (Ans. 3–4) that Utley explicitly discloses nicotine as a target compound for the reagents for detecting components of cigarette smoke (Utley ¶ 43) and, because nicotine is a special or particular compound that is present in tobacco smoke, nicotine falls within the scope of “one or more compounds unique to tobacco smoke,” as recited in the claim. Appellant’s contentions at pages 4–7 of the Appeal Brief are not persuasive because they are largely conclusory and, without more, do not reveal reversible error in the Examiner’s factual findings and analysis in this regard. Accordingly, we affirm the Examiner’s rejection of claims 1–19 under 35 U.S.C. § 102(a)(1) and/or § 102(a)(2) as being anticipated by Utley. Appeal 2019-003214 Application 14/698,790 7 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–19 102(a)(1), 102(a)(2) Utley 1–19 Overall Outcome 1–19 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)(iv). AFFIRMED