Ex Parte HARRELL et al

Patent Trial and Appeal BoardSep 14, 2018

14463604 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/463,604 08/19/2014 Rodney HARRELL 181 7590 09/18/2018 MILES & STOCKBRIDGE PC 1751 PINNACLE DRIVE SUITE 1500 TYSONS CORNER, VA 22102-3833 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 ATTORNEY DOCKET NO. CONFIRMATION NO. T9089- l 9897US01 8178 EXAMINER ITSKOVICH, MIKHAIL ART UNIT PAPER NUMBER 2483 NOTIFICATION DATE DELIVERY MODE 09/18/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ipdocketing@milesstockbridge.com lmansfield@milesstockbridge.com dtsepal@milesstockbridge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RODNEY HARRELL, BRIAN K. GRAY, DAVID A. JACKSON, RONALD D. SWAYNE, DARWIN Y. CHEN, and BRYAN C. MINOR 1 Appeal2018-003255 Application 14/463,604 Technology Center 2400 Before MICHAEL J. STRAUSS, SHARON PENICK, and AARON W. MOORE, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is Snap-on Incorporated. See App. Br. 3. Appeal2018-003255 Application 14/463,604 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-25. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 2 THE INVENTION The claims are directed to a self-calibrating multi-camera vehicle alignment system. Spec., Title; Claim 1. Claim 1, reproduced below with a dispositive limitation emphasized in italics, is illustrative of the claimed subject matter: 1. A portable vehicle alignment system, comprising: a pair of base tower assemblies, each base tower assembly comprising a pedestal, a columnar tower removably attachable to a top portion of the pedestal to extend substantially vertically upward from the pedestal, and a camera pod mounted to move along a length of the tower; and a data processor for processing image data from the camera pods, and having a wireless communication device; wherein a first one of the camera pods comprises a first camera for capturing image data of a first target mounted on a vehicle, a calibration target disposed in a fixed relationship to the first camera, and a wireless communication device for communicating with the data processor's wireless communication device; wherein a second one of the camera pods comprises a second camera for capturing image data of a second target mounted on the vehicle, a calibration camera disposed in a fixed relationship to the second camera for capturing images of the calibration target, and a wireless communication device for communicating with the data processor's wireless communication device; 2 We refer to the Specification, filed Aug. 19, 2014 ("Spec."); the Final Office Action, mailed April 12, 2017 ("Final Act."); the Appeal Brief, filed Sept. 7, 2017 ("App. Br."); the Examiner's Answer, mailed Dec. 13, 2017 ("Ans."), and the Reply Brief, filed Feb. 5, 2018 ("Reply Br."). 2 Appeal2018-003255 Application 14/463,604 wherein each camera pod has a motor drive to move the pod along the length of the tower, and the data processor is for controlling the motor drives using the images captured by the calibration camera such that the motion of the camera pods is synchronous with each other; wherein the base tower assemblies are each separately movable by a user; and wherein each of the pedestals comprises a manually- operated clamp proximal its top portion for removably fixedly attaching the tower to the pedestal in one of a plurality of positions such that the orientation of the camera pod to the pedestal is angularly adjustable, allowing horizontal rotation of the camera pod. REFERENCES The following prior art is relied upon by the Examiner in rejecting the claims on appeal: Holt Hamaguchi Petelin Grams Jackson Clark us 4,298,907 us 5,323,098 us 5,436,542 US 6,447,236 Bl US 2002/0189115 Al US 7,922,424 B2 REJECTIONS The Examiner made the following rejections: Nov. 3, 1981 June 21, 1994 July 25, 1995 Sept. 10, 2002 Dec. 19, 2002 Apr. 12, 2011 Claims 1---6 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Jackson, Grams, and Petelin. Final Act. 4--10. Claims 7, 8, and 12-25 stand rejected under 35 U.S.C. Â§I03(a) as being unpatentable over Jackson, Gram, Hamaguchi, and Holt. Final Act. 10-13. Claims 9-11 stand rejected under 35 U.S.C. Â§I03(a) as being unpatentable over Jackson, Grams, Petelin, and Clark. Final Act. 13-16. 3 Appeal2018-003255 Application 14/463,604 APPELLANTS' CONTENTION3 According to Appellants, the rejection is improper because "Petelin does not teach or suggest synchronization of movement of two camera pods by a processor, using data from a calibration camera [ as required by claim 1]. Petelin only teaches one motorized camera in its apparatus." App. Br. 6. ISSUE ON APPEAL Based on Appellants' arguments in the Appeal Brief (App. Br. 5-8) and Reply Brief (Reply Br. 2-5), the issue presented on appeal is whether the disputed language of claim 1 is to be construed as (i) a statement of intended result that is not to be afforded patentable weight (see Ans. 4--5) or (ii) defining required structure to perform the recited functions (Reply Br. 5). ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred in rejecting independent claims 1 and 14 under 35 U.S.C. Â§ 103(a). We agree with Appellants' conclusions as to this rejection of the claims. According to the Examiner: The intended result of using a motor drive controlled by a processor is "for controlling the motor drives using the images captured by the calibration camera such that the motion of the camera pods is synchronous with each other." Claim language should not be given patentable weight when "it simply expresses the intended result" of the invention. 3 We note Appellants raise additional contentions of error but we do not reach them as our resolution of this contention is dispositive of the appealed rejections under 35 U.S.C. Â§ 103(a). 4 Appeal2018-003255 Application 14/463,604 Ans. 5 (citing Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005); M.P.E.P. 2111.04). The Examiner concludes, as a matter of claim construction, such elements of intended use need not occur and, accordingly, need not be found in the prior art to sustain a rejection under 35 U.S.C. Â§ 103(a). Id. Appellants contend the Examiner's interpretation is unreasonably broad. Reply Br. 5. Appellants argue Hoffer, as directed to a whereby clause in a method claim, is inapposite to the disputed apparatus claim including language that defines structure to perform the recited functions. Id. According to Appellants, the claims do not make the recited functionality optional and such functional language cannot be ignored. Id (citing Hoffer). Appellants' contention is persuasive. We agree with the Examiner that a "whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited." See Minton v. Nat'! Ass 'n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003). However, the determination of whether an intended use clause is a limitation in a claim depends on the specific facts of the case. In Hoffer the court held that when a "whereby clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention." 405 F.3d at 1329. Herein, independent claims 1 and 14 are directed to a system, i.e., the structure of an apparatus, not steps of a method as in Minton and Hoffer. Even if otherwise, a wherein clause nonetheless limits a process claim where the clause gives "meaning and purpose to the manipulation steps." Griffin v. Bertina, 285 F.3 d 1029, 1034 (Fed. Cir. 2002). Furthermore, "apparatus claims may appropriately use functional 5 Appeal2018-003255 Application 14/463,604 language" and such claims require "that the apparatus as provided must be 'capable' of performing the recited function, not that it might later be modified to perform that function." Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (citing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008)); see also Ex parte Tsutsumi, No. 2010-005520, 2012 WL 6107993, *2 (PTAB Nov. 6, 2012). We agree with Appellants that the disputed limitation is not directed to an intended use but to reciting functional capabilities of structure. Furthermore, language describing what the "processor is for," when read in context, is not merely a desired result as in a process claim but, instead, defines required structure for performing the recited functions of "controlling the motor drives using images captured by the calibration camera such that the motion of the camera pods is synchronous with each other." In construing this claim language, we note that motion of the camera pods is described in Appellants' Specification: The movements of the two camera pods 120a, 120b up and down are kept synchronous by utilizing the calibration camera 155 and calibration target 140, along with wheel target information from the vehicle 30. The processing of this information allows the data processor 125 to adjust the motor speed to keep the camera pods 120a, 120b in sync with each other, and adjusts the pod speed to stay in synch with movement of a vehicle lift (not shown) on which the vehicle 30 can be carried while the alignment is being performed. Spec. 42. Thus, we conclude the independent claims require a processor that is capable ( e.g., is programmed to execute the recited steps) of controlling the motor drives ( e.g., controlling motor speed) using images captured by the calibration camera such that the motion of the camera pods is 6 Appeal2018-003255 Application 14/463,604 synchronous with each other. Because the Examiner has failed to provide evidence that the prior art teaches or suggests a data processor having the recited capabilities, we do not sustain the rejections of independent claims 1 and 14 or the rejections of dependent claims 2-13 and 15-25 which stand with their respective base independent claims. DECISION We reverse the Examiner's decision to reject claims 1-25 under 35 U.S.C. Â§ 103(a). REVERSED 7