Ex Parte BETHEL

Patent Trial and Appeal Board

Feb 10, 2016

13337942 (P.T.A.B. Feb. 10, 2016)

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.
13/337,942 12/27/2011 JEFFREY D. BETHEL 156611-12.2 4265
97242 7590 02/10/2016
Kutak Rock LLP
2300 Main Street, Suite 800
Kansas City, MO 64108
EXAMINER
BUGG, GEORGE A
ART UNIT PAPER NUMBER
2682
MAIL DATE DELIVERY MODE
02/10/2016 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 JEFFREY D. BETHEL
____________________

Appeal 2014-004301
Application 13/337,942
Technology Center 2600
____________________

Before THU A. DANG, CARL L. SILVERMAN, and
SCOTT B. HOWARD, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellant, the invention relates to “electronic aircraft
flight data display instruments” (Spec. 1, ll. 17–18).

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B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. An informational display unit for an aircraft having an
instrument panel comprising:
a generally rectangular panel having a front side and a rear
side; at least one display disposed on the front side of the panel
to convey information; and
a first protrusion protruding from the rear side of the panel
and disposed at an off-centered location of the rear side of the
panel, the first protrusion having a shape corresponding to a first
pre-existing hole in a dashboard of the aircraft, the first
protrusion mounted into the first pre-existing hole in the
dashboard of the aircraft to position the unit on the dashboard
and to secure the unit in the aircraft.

C. REJECTION
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Carlson US 5,396,425 Mar. 7, 1995
Dutton US 2007 /0152848 Al July 5, 2007
Stiffler US 7,420,476 Sept. 2, 2008

Claims 1–23 stand rejected under § 103(a) as being unpatentable over
Carlson, or in the alternate, over Carlson in view of Dutton, and/or Stiffler.
II. ISSUE
The principal issue before us is whether the Examiner has erred in
finding Carlson, in view of Dutton and/or Stiffler teaches or would have
suggested a “protrusion protruding from the rear side of the panel and is
placed at an off-centered location of the rear side of the panel” (claim 1,
emphasis added).

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellant’s Invention
1. Appellant’s invention is directed to an electronic display instrument,
wherein Figure 1 is reproduced below:

Figure 1 shows an electronic display instrument 30 that includes a
control module 50 protruding from the back 36 of the instrument body 32,
wherein the control module 50 may have various sizes and shapes (Spec. 8,
l. 26 to Spec. 9, l. 7) and the body 32 may have various widths (Spec. 9, ll.
8–14), heights (Spec. 9, ll. 14–20), thickness (Spec. 20–24), and shapes
(Spec. 9, l. 29–31) . The control module 50 can be sized and shaped to fit
snugly within a pre-existing instrument hole or compartment in the
dashboard 14 exposed by removing a conventional display instrument from
the dashboard to secure the instrument in a desired position (Spec. 8, l. 31 to
Spec. 9, l. 7). The body 32 is sized and shaped so that the instrument 30
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does not protrude into panel space associated with other instruments
positioned directly above, below or to the left or right of the instruments
being replaced (Spec. 9, ll. 24–28), wherein the body 32 may be made small
enough to allow a user to selectively replace one or more of the standard six
instruments (Spec. 10, ll. 5–6), or any configuration of conventional display
instruments positioned adjacent each other (Spec. 11, ll. 17–22).
Carlson
2. Carlson discloses a vertical velocity indicator (Abstract),
wherein Figure 3 is reproduced below:

Figure 3 shows a vertical velocity indicator 40 including a visual
display 41 within housing 43 sized for retrofit within the instrument panel of
the aircraft at a position normally occupied by a conventional indicator (col.
2, l. 65 to col. 3, l. 2).
IV. ANALYSIS
Appellant points out “[i]ndependent claim 1 requires, among other
things, a rearward protrusion that is ‘disposed at an off-centered location’”
(App. Br. 9, emphasis omitted). Appellant contends “[s]uch a configuration
advantageously permits the protrusion . . . to be positioned within a pre-
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existing instrument hole in a dashboard,” while at the same time “increasing
the display size . . . to extend beyond the location of the original instrument
(or pre-existing hole) in a manner that generally does not interfere with the
location of other instruments within the dashboard” (id.). According to
Appellant, Carlson only discloses “a square display with a generally circular,
centered housing/protrusion 43 that may be sized for retrofit within an
instrument panel” (id.). Thus, according to Appellant, Appellant’s invention
“can operate in a plurality of configurations” whereas “the Carlson device is
limited to operate in a single configuration” (App. Br. 10).
Appellant then contends “Carlson provides no motivation or reasoning
why one having ordinary skill in the art should modify the position of its
housing/protrusion 43” (App. Br. 11). According to Appellant, “such a
modification would render Carlson unsatisfactory for its intended purpose
and/or would change its principle of operation of replacing and being
positioned within the space normally occupied by a single conventional
indicator” (id.).
We have considered all of Appellant’s arguments and evidence
presented. However, we disagree with Appellant’s contentions regarding the
Examiner's rejections of the claims. We agree with the Examiner’s findings,
and find no error with the Examiner’s conclusion that the claims would have
been obvious over the combined teachings.
Appellant’s invention is directed to an electronic display instrument
with a control module protruding from the back of the instrument body,
wherein, according to Appellant’s Specification, the control module may
have various sizes and shapes to fit snugly within a pre-existing instrument
hole or compartment in a dashboard, and the body is may have various sizes
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and shapes small enough to replace standard instruments on the dashboard
but does not protrude into panel space associated with other adjacent
instruments (FF 1).
The Examiner finds, and we agree, “Carlson clearly permits
[installing] the protruding element within a pre-existing instrument hole in a
dashboard” because “Carlson discloses a housing (43), which is sized for
retrofit within the instrument panel of the aircraft at a position normally
occupied by a conventional indicator” (Ans. 11; FF 2). As the Examiner
points out, although Appellant contends the claimed invention “increases the
display size for the instrument to extend beyond the location of the original
instrument…, Appellant has not claim[ed] this feature” (id.). Similarly, the
Examiner points out, although Appellant contends the advantages to
Appellant’s invention, “Appellant is arguing for limitations not recited in the
claims” (Ans. 12).
Although Appellant contends that Carlson does not disclose a
rearward protrusion that is “disposed at an off-centered location’” (App. Br.
8), as the Examiner points out, “claim 1 was rejected under 35 U.S.C §103
for obviousness” (Ans. 12). That is, the test for obviousness is not what
Carlson must individually disclose, but what Carlson when combined with
the other references, would have suggested to one of ordinary skill in the art.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
Examiner concludes, and we agree, the ordinarily skilled artisan “would see
that the protrusion being off-centered is an obvious feature that can be
replicated via routine experimentation” (Ans. 12).
The Supreme Court guides that the conclusion of obviousness can be
based on the background knowledge possessed by a person having ordinary
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skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Here, Appellant has presented no evidence that replacing a plurality of
instruments instead of one instrument on the dashboard (by enlarging the
instrument body to replace a plurality of instruments on the dashboard), and
thus, positioning the control module protruding into the pre-existing
instrument hole off-centered with respect to the larger instrument body,
would have been “uniquely challenging or difficult for one of ordinary skill
in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR 550 U.S. at 418). The skilled artisan is “[a]
person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
As set forth in Appellant’s Specification, similar to Carlson,
Appellant’s control module can be any size and shape to fit snugly within a
pre-existing instrument hole and Appellant’s module can be any size and
shape so that the instrument does not protrude into panel space associated
with other instruments (FF 1). Although Appellant contends modification of
Carlson (to increase the size of the body and thus positioning the module
off-centered) “would render Carlson unsatisfactory for its intended purpose
and/or would change its principle of operation” (App. Br. 11), as explained
by the Examiner, “[t]he principle of operation is to be retrofitted into an
existing dashboard” (Ans. 12). That is, we conclude that it would have been
well within the skill of one skilled in the art to increase the size of the body
to replace more than one instrument, wherein, in order to retrofit the module
into a pre-existing instrument hole without protruding into a panel space
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associated with other instruments, it would also be obvious to position the
module off-centered.
We agree with the Examiner that the selection of the location of the
protrusion “does not change the operation of the apparatus in any way”
wherein “one of ordinary skill would, via routine experimentation, move it
any location including centered and ‘off-centered’” (Ans. 13). Such, a
substitution/design choice would have been well within the skill of the art.
See KSR, 550 U.S. at 417. That is, we agree Appellant’s invention is simply
a modification of familiar prior art teachings (as taught or suggested by the
cited reference) that would have realized a predictable result. KSR at 421.
Minor differences (i.e., whether the module is positioned centered or off-
centered) between the prior art and a claimed device may be a matter of
design choice absent evidence to the contrary (see In re Rice, 341 F.2d 309,
314 (CCPA 1965)).
Appellant also contends “the Office must consider additional evidence
relevant to the issue of obviousness (also known as ‘secondary
consideration’) submitted by Appellant” which includes “several industry
publications highlighting the commercial success of the product and a long-
felt but unmet need in the relevant industry” (App. Br. 13). However, the
Examiner finds, and we agree, the “evidence” provided by Appellant “does
not tie the commercial success to the claimed ‘off-center’ protrusion of the
claim” (Ans. 19). As the Examiner explains, “[t]he section of the article
cited by the Appellant where the article states that the products’ ‘form factor
and physical characteristics also go beyond what’s been available before,’
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does nothing to explain how the particular feature of having an ‘off-
centered’ protrusion is the reason why there is commercial success” (id.).
Evidence of nonobviousness must be commensurate in scope with the
claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (citing
In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998). In that regard, in order to be accorded
substantial weight, there must be a nexus between the merits of the claimed
invention and the evidence of secondary considerations. In re GPAC Inc., 57
F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and factually
sufficient connection between the objective evidence and the claimed
invention, such that the objective evidence should be considered in
determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing
Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of showing that
there is a nexus lies with Appellant. Id.; see also In re Paulsen, 30 F.3d
1475, 1482 (Fed. Cir. 1994).
Here, Appellant relies on a publication describing “that company
dealers have ordered $1.5 million of the products” wherein “the article
illustrates several images of the products” (App. Br. 13) as showing
commercial success of Appellant’s invention. However, we agree with the
Examiner that the article does not show that the ordering of the products are
tied “to the claimed ‘off-center’ protrusion of the claim” (which Appellant
contends as the nonobvious embodiment) (Ans. 19). Although Appellant
contends “the secondary considerations provided by the Appellant
demonstrate the commercial success of the inventive concept and ties such
commercial success to the specific features of the present claims” (App. Br.
13), Appellant does not disclose any evidence that the commercial success is
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tied to the contested “off-center” protrusion, other than mere attorney
arguments. While attorney arguments are helpful when directing us to
evidence in the record, the arguments themselves do not constitute evidence.
Here, Appellant’s arguments are speculative and unsupported by objective
evidence. Argument of counsel cannot take the place of evidence lacking in
the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). As such, these arguments
are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Thus,
we find Appellant’s arguments and proffered evidence unpersuasive.
In the absence of the specific terms of orders or the circumstances
under which they were placed, we do not see how the orders are probative of
non-obviousness of “off-center” limitation, as correctly observed by the
Examiner (Ans. 19). As such, we are not persuaded by Appellant’s
arguments regarding the secondary considerations.
Accordingly, Appellant has not shown the Examiner erred in rejecting
claim 1 over Carlson in further view of Dutton and/or Stiffler. As for
dependent claims 2, 4, 5, and 11, Appellant merely contends “Carlson-
Dutton combination fails to meet all of the limitations of independent claim
1” (App. Br. 11). Accordingly, claims 2, 4, 5, and 11 fall with claim 1.
As for claims 6–11, although Appellant contends “none of the
references shows a plurality of protrusion, with each protrusion in the
plurality having a different structure and/or a different functionality” (App.
Br. 12), we find no error with the Examiner’s finding “[a]dding another
protrusion is merely duplicative” (Ans. 17). That is, having a duplicative
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embodiment is simply a modification of familiar prior art teachings that
would have realized a predictable result. KSR at 421.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1–23 under 35 U.S.C. § 103(a) is
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)(1)(iv).

AFFIRMED