Ex Parte Filipovic

Patent Trial and Appeal BoardMay 28, 2014

11965852 (P.T.A.B. May. 28, 2014)

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. 11/965,852 12/28/2007 Dragan Filipovic 9610-77535-US 4187 109813 7590 05/28/2014 Fitch, Even, Tabin & Flannery, LLP 120 South LaSalle Street Suite 1600 Chicago, IL 60603-3406 EXAMINER SCHECHTER, ANDREW M ART UNIT PAPER NUMBER 2857 MAIL DATE DELIVERY MODE 05/28/2014 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 DRAGAN FILIPOVIC ____________ Appeal 2012-007115 Application 11/965,852 Technology Center 2800 ____________ Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and JAMES C. HOUSEL, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-007115 Application 11/965,852 2 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 1 is illustrative of the claimed subject matter: 1. An apparatus configured and arranged to provide a data interface between equipment, having a plurality of signal lights, to be temporarily monitored and a diagnostic data gathering apparatus, comprising: a channel configured and arranged to be fixedly mounted to the equipment to be temporarily monitored; at least one sensor-engagement member movably captivated within the channel such that the sensor-engagement member moves laterally with respect to the signal lights; a sensor assembly comprising a plurality of photosensitive receptors disposed in a pattern that corresponds to at least two of the plurality of signal lights as comprise a part of the equipment to be temporarily monitored such that illumination events for each of the at least two of the plurality of signal lights is detected by a corresponding one of the plurality of photosensitive receptors; an affixment member configured and arranged to bias the sensor assembly towards the at least one sensor-engagement member to thereby retain the sensor assembly in place with respect to the equipment to be temporarily monitored; such that the sensor assembly, in combination with a corresponding one of the at least one sensor-engagement member, can be moved along the channel to a selected lateral position with respect to at least one of the signal lights and then retained in the selected position by the affixment member. Appeal 2012-007115 Application 11/965,852 3 The only other independent claim 15 recites a corresponding method that is performed using the apparatus of claim 1 (Claims App’x). The Examiner maintains, and the Appellant appeals, the following rejections: 1) Claims 1, 4-9, 14, 15, and 18-20 under 35 U.S.C. § 103 (a) as unpatentable over Miller1 in view of Ward2; 2) Claims 2, 3, 16, and 17 under 35 U.S.C. § 103 (a) as unpatentable over Miller, Ward, and Lem3; 3) Claims 10, 11, and 21 under 35 U.S.C. § 103 (a) as unpatentable over Miller, Ward, and Aswell4; and 4) Claims 12 and 13 under 35 U.S.C. § 103 (a) as unpatentable over Miller, Ward, and Crummey.5 OPINION The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[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 1 U.S. 2002/0170073 A1, published on Nov. 14, 2002. 2 U.S. 2008/0185093 A1, published on Aug. 7, 2008. 3 U.S. 6,378,687 B1, published on Apr. 30, 2002. 4 U.S. 6,553,437 B1, published on Apr. 22, 2003. 5 U.S. 2002/0080468 A1, published on Jun. 27, 2002. Appeal 2012-007115 Application 11/965,852 4 obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). After review of the respective positions provided by Appellant and the Examiner, we agree with Appellant that the Examiner has not met the burden in this case. A preponderance of the evidence supports Appellant’s assertions that the Examiner’s rejection is based on improper hindsight in proposing to modify Miller based on Ward so as to result in the claimed invention. Miller teaches a television set top box channel feedback system for determining a channel state (abstract; para. [0001]) with an exemplified pattern of twenty-eight (28) (or 35) light sensing elements that match 28 (or 35) LED segments in a set top box channel display (Miller para. [0034]; Fig. 4). Ward is directed to an applicator and method for transferring decals or labels to a carrier web. The Examiner relies upon Ward’s teachings regarding aligning one bulb of, e.g., three bulbs 163, 164, and 165, with a lens 166 that will focus light from the bulb so that light reaches and illuminates the carrier web W in order to sense registration marks on the web (Ward para. [0055]; e.g., Ans. 6). We agree with Appellant that Ward does not teach properly aligning a sensor with a light; rather Ward is aligning a lens with a particular one of his lights to the exclusion of other lights (App. Br. 15-17). As Appellant points Appeal 2012-007115 Application 11/965,852 5 out, this is not the same as aligning sensors with particular lights “such that illumination events for each of the at least two of the plurality of signal lights is detected by a corresponding one of the plurality of photosensitive receptors” as recited in independent claim 1 (and similarly in claim 15) (App. Br. 15-17; Reply Br. 8). Accordingly, we agree with Appellant that the Examiner has not articulated a sufficient reason for combining Ward’s teachings with Miller absent the use of impermissible hindsight. For the foregoing reasons, and those presented by Appellant in the Briefs, the Examiner has not satisfied the initial burden of presenting a prima facie case of obviousness, and we conclude that the Examiner’s rejection is improperly based upon improper hindsight reasoning. KSR, 550 U.S. at 421. None of the other references applied in the rejections have been relied upon by the Examiner to cure the deficiencies noted above. For these reasons and those set out in the Briefs, we reverse the Examiner’s § 103 rejections on appeal. CONCLUSION In summary, the rejections before us on appeal are reversed. REVERSED cdc