RM2, Inc.

Patent Trials and Appeals Board

Jan 18, 2022

2020004395 (P.T.A.B. Jan. 18, 2022)

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. 14/720,051 05/22/2015 Mark A. Pedraza RM2-100C3 7733 35083 7590 01/18/2022 CHARLES D. GAVRILOVICH, JR., GAVRILOVICH, DODD & LINDSEY, LLP 985 PASEO LA CRESTA, SUITE B CHULA VISTA, CA 91910-6729 EXAMINER PHAM, QUANG ART UNIT PAPER NUMBER 2684 MAIL DATE DELIVERY MODE 01/18/2022 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 MARK A. PEDRAZA, RICHARD G. LUBESKI, and MARK A. O’CONNELL ________________ Appeal 2020-004395 Application 14/720,051 Technology Center 2600 ________________ Before JOHNNY A. KUMAR, JASON J. CHUNG, and JAMES W. DEJMEK, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2020-004395 Application 14/720,051 2 STATEMENT OF CASE Introduction This application returns to us after another panel of this Board affirmed the Examiner’s decision to reject then-pending claims 1-14, and 22−28. See Ex parte Pedraza, Appeal 2018-007168 (PTAB Apr. 1, 2019).1 Prosecution reopened after that decision, and Appellant2 now appeals under 35 U.S.C. § 134(a) the Examiner’s subsequent decision to reject claims 1-14 and 22-31. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Invention Appellant’s invention relates to a device for providing moisture data to a cellular telephone (See Spec., Title). Exemplary, now-pending claim 1 under appeal reads as follows: 1. A device comprising: a moisture sensor; a data interface connected to the moisture sensor and configured to obtain, using the moisture sensor, a moisture level measurement of a building material forming a portion of a building structure, the moisture level measurement indicative of a level of moisture in the building material; and communication interface circuitry connected to the data interface and configured to provide, to a cellular telephone, information indicative of the moisture level measurement for transmission of the information by the cellular telephone 1 We hereinafter refer to the prior appeal as “Pedraza I,” and our decision in that prior appeal as “Pedraza I Decision.” 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, RM2, Inc. is the real party in interest. Appeal Br. 3. Appeal 2020-004395 Application 14/720,051 3 through a cellular network, the information indicative of the level of moisture in the building material. Appeal Br. 44 (emphases added to indicate limitations in dispute). REJECTIONS Claims 1, 7, 8, 14, 22, and 28-31 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Amacher (US 2003/0222783 Al, published Dec. 4, 2003) in view of Dawson (US 2002/0041824 Al, published Apr. 11, 2002), Diduck (US 6,025,788, issued Feb. 15, 2000) and Yamamoto (US 2002/0038353 Al, published Mar. 28, 2002). Claims 2-4, 6, 9-11, 13, 23-25, and 27 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Amacher in view of Dawson, Diduck, and Yamamoto, and further in view of Bengtsson (US 6,865,191 Bl, issued Mar. 8, 2005). Claims 5, 12, and 26 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Amacher in view of Dawson, Diduck, Yamamoto, and Bengtsson and further in view of Corwin (US 2005/0131652 Al, published June 16, 2005). ANALYSIS We have only considered those arguments that Appellant actually raised in the Briefs.3 Arguments Appellant could have made, but chose not 3 In the instant appeal, claims 2-7, 9-14, and 23-31 are not argued separately from claims 1, 8, and 22 in either of Appellant’s briefs (Appeal Br. 8-42; Reply Br. 2-12), and will not be separately addressed. Appeal 2020-004395 Application 14/720,051 4 to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). A. Procedural History In Pedraza I, the Board affirmed the Examiner’s rejections of then- pending claims 1-5, 7, 8, and 10-22. In particular, we affirmed the Examiner’s rejection under pre-AIA 35 U.S.C. § 103(a) of then-pending (i) claims 1, 7−8, 14, 22, and 28 over Amacher, Diduck, and Yamamoto; (ii) claims 2−4, 6, 9−11, 13, 23−25, and 27 over Amacher, Diduck, Yamamoto, and Bengtsson; and (iii) claims 5, 12, and 26 over Amacher, Diduck, Yamamoto, Bengtsson, and Corwin. See Pedraza I Decision. In the prior appeal (Pedraza I), Appellant provided arguments with respect to claim 1, challenging the Examiner’s findings with respect to Amacher, Diduck, and Yamamoto. See Pedraza I Decision 3-8. Appellant also presented separate arguments (1) for claim 2, regarding the Examiner’s findings with respect to Amacher, Diduck, Yamamoto, and Bengtsson (id.), and (2) for claim 5, regarding the Examiner’s findings with respect to Amacher, Diduck, Yamamoto, Bengtsson, and Corwin (id.). Reproduced is then-pending claim 1 from Pedraza I: 1. A device comprising: a moisture sensor; a data interface connected to the moisture sensor and configured to obtain, using the moisture sensor, a moisture measurement of a building material forming a portion of a building structure; and communication interface circuitry connected to the data interface and configured to provide, to a cellular telephone, information indicative of the moisture measurement for Appeal 2020-004395 Application 14/720,051 5 transmission of the information by the cellular telephone through a cellular network. Appellant subsequently filed a Request for Continued Examination, and amended claim 1 to include new limitations including, inter alia, the emphasized portions of now-pending claim 1 that are in dispute before us. Compare then-pending claim 1, with now-pending claim 1. Although Appellant amended claim 1 to some extent (such as changing “moisture measurement” to “moisture level measurement,” adding “the moisture level measurement indicative of a level of moisture in the building material” after “building structure” and adding “the information indicative of the level of moisture in the building material” after “cellular network”), Appellant has not shown the disputed limitations are substantively different from the disputed limitations associated with Pedraza I. See Pedraza I Decision 3-8; claim 1. For example, Appellant does not assert adding “level” to “moisture measurement” results in a material change in the context of claim 1. Because Appellant tries to reargue issues that were settled during Pedraza I, the doctrine of law of the case precludes such arguments. The law of the case doctrine “generally bars retrial of issues that were previously resolved.” Intergraph Corp. v. Intel Corp., 253 F.3d 695, 697 (Fed. Cir. 2001). More particularly, the doctrine applies to both explicit determinations as well as all “necessary inferences from the disposition.” Kori. Corp. v. Wilco Marsh Buggies & Draglines, Inc., 761 F.2d 649, 657 (Fed. Cir. 1985). “[A] Board decision in an application is the ‘law of the case,’ and is thus controlling in that application and any subsequent, related application.” Appeal 2020-004395 Application 14/720,051 6 The Manual of Patent Examining Procedure (MPEP) § 706.07(h)(XI)(A) (9th ed. rev. 08.2017 Jan. 2018). Accordingly, the Board has applied routinely the “law of the case” and found that all conclusions and decisions in a first decision by the Board, whether express or implicit, are accorded issue-preclusive effect and are not revisited during subsequent prosecution of the same application. See Ex parte Fisher, Appeal No. 2013-000665, 2015 WL 5782991, at *4 (PTAB Sept. 16, 2015), (non-precedential); Ex parte Keggenhoff, Appeal No. 2012-001720, 2014 WL 3950403, at *4-5 (PTAB Aug. 11, 2014) (non-precedential); Ex parte Wood, Appeal No. 2010-006834, 2012 WL 2929626, at *3 (BPAI July 12, 2012) (non- precedential); PTAB Standard Operating Procedure 2, Rev. 10, § III4 (“A routine decision is binding in the case in which it is made, even if it is not designated as precedential or informative, . . . .”). Under the doctrine of law of the case, the Board will adhere generally to a decision in a prior appeal in the same case unless one of three exceptions exist: (i) the evidence in a subsequent appeal contains new and different material evidence; (ii) there has been an intervening change of controlling legal authority; or (iii) the earlier ruling was clearly erroneous and would work a manifest injustice. See Intergraph, 253 F.3d at 698; Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007); Gould, Inc. v. United States, 67 F.3d 925, 930 (Fed. Cir. 1995). To the extent we apply the law of the case doctrine, we determine that none of these exceptions exist. Appellant does not address directly the doctrine of law of the case in the briefs. Based on our review of the record, 4 https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20 FINAL.pdf (last accessed Feb. 27, 2020). Appeal 2020-004395 Application 14/720,051 7 we have not identified any new and different material evidence or any intervening change in the law. Nor have we found our Pedraza I Decision is clearly incorrect and would work a manifest injustice. Consistent with our assessment, Appellant did not request any rehearing for our Pedraza I Decision. Further, there has not been an intervening change of controlling legal authority, nor do we determine the earlier ruling was clearly erroneous. See Northern Helex Co. v. United States, 634 F.2d 557, 562 (Fed. Cir. 1980) (explaining that “[a] mere suspicion of error, no matter how well supported, does not warrant reopening an already decided point”). Accordingly, under the law of the case doctrine, the Examiner’s findings of Amacher, Diduck, and Yamamoto related to then-pending claim 1-as well as the proffered combination of the references-are binding in the instant appeal as it relates to now-pending claim 1. Thus, the doctrine of law of the case applies here, and Appellant may not reargue the disputed limitations. Claim 1 (now-pending) is reproduced below with limitations that were not explicitly addressed in Pedraza I emphasized in italics: 1. A device comprising: a moisture sensor; a data interface connected to the moisture sensor and configured to obtain, using the moisture sensor, a moisture level measurement of a building material forming a portion of a building structure, the moisture level measurement indicative of a level of moisture in the building material; and communication interface circuitry connected to the data interface and configured to provide, to a cellular telephone, information indicative of the moisture level measurement for transmission of the information by the cellular telephone Appeal 2020-004395 Application 14/720,051 8 through a cellular network, the information indicative of the level of moisture in the building material. With respect to the italicized limitations above, the Examiner relies on Amacher and Dawson to teach, inter alia, the “moisture level measurement” limitations. Final Act. 4-7; Ans. 4, 5. Appellant argues that: Dawson appears to utilize a hard-wired fluid flow control circuit that is triggered to dispense sanitizing fluid upon the dryness of the contact material reaching or exceeding a predetermined level. Noticeably absent is any explicit or inherent teaching or suggestion that the probe 121 of Dawson actually “obtains a moisture level measurement indicative of a level of moisture in the building material.” To the contrary, probe 121 of Dawson appears to only indicate whether the electrical resistance within contact material 20 meets or exceeds a threshold value. Thus, if the electrical resistance is at or above a threshold value, the fluid flow control circuit of Dawson will dispense sanitizing fluid. Appeal Br. 10. The Examiner finds: In this instant case, Examiner respectfully disagrees with Appellant because as discussed in the Final rejection mailed on 09/25/2019, the rejection relied upon Amacher to already disclose a method for monitoring moisture at a building structure using a plurality of moisture sensors wherein each moisture sensor generates and transmits a signal indicative of moisture presence to a receiver that in turns transmits the signal to a central collector via wired/wireless communication for off- site monitoring (Amacher: Abstract, [0015], [0019], [0041]- [0045], and FIG. 8-10: a sensor detects the moisture and communicates its respective signal to the receiver, at which the presence and location of the moisture may then be learned. Such a system may also include the ability for further Appeal 2020-004395 Application 14/720,051 9 communication of such information to a remote central signal collector, for off-site monitoring of the structure by other parties or service providers), Ans. 4. We determine Amacher to teach the disputed limitations and as such is cumulative to the combined teachings of Amacher and Dawson, as discussed above, and thus Dawson is not necessary to support the rejection. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (explaining that limiting an affirmance of an obviousness rejection to fewer than all of the references cited by the Examiner does not constitute a new ground of rejection); In re Bush, 296 F.2d 491, 495-96 (CCPA 1961); see also MPEP § 1207.03(a)(II) (9th ed. Rev. 10.2019, rev. June 2020). Thus, we do not find Appellant’s arguments related to Dawson persuasive that the Examiner’s rejection is in error. Regarding Appellant’s additional arguments (Appeal Br. 11-44), we find that the Examiner has responded in the Answer with sufficient evidence. Ans. 5-13. Therefore, we adopt the Examiner’s findings and underlying reasoning, which are incorporated herein by reference. Accordingly, Appellant has not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner’s reading of the contested limitations on the cited prior art, or in the proper combinability of the prior art references as suggested by the Examiner. Therefore, we sustain the Examiner’s obviousness rejections of claims 1-14 and 22-31. Appeal 2020-004395 Application 14/720,051 10 CONCLUSION In summary: TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 7, 8, 14, 22, 28-31 103(a) Amacher, Dawson, Diduck, Yamamoto 1, 7, 8, 14, 22, 28-31 2-4, 6, 9- 11, 13, 23- 25, 27 103(a) Amacher, Dawson, Diduck, Yamamoto, Bengtsson 2-4, 6, 9- 11, 13, 23- 25, 27 5, 12, 26 103(a) Amacher, Dawson, Diduck, Yamamoto, Bengtsson, Corwin 5, 12, 26 Overall Outcome 1-14, 22- 31