Ex Parte Hill et al

Patent Trial and Appeal BoardMar 3, 2016

11843263 (P.T.A.B. Mar. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111843,263 08/22/2007 57137 7590 03/07/2016 Maschoff Brennan 1389 Center Drive, Suite 300 Park City, UT 84098 FIRST NAMED INVENTOR Donald J. Hill 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. Ll032.10042US02 4770 EXAMINER KONG, SZE-HON ART UNIT PAPER NUMBER 3661 NOTIFICATION DATE DELIVERY MODE 03/07/2016 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): docket@mabr.com bisraelsen@mabr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD J. HILL, ALEKSANDER V ALDIS VELDE, and STUART GRAY Appeal2013-003782 Application 11/843,263 1 Technology Center 3600 Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and CYNTHIA L. MURPHY, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1---6, 8, and 10-22. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to the Appellants, "[t]he real party in interest comprises LEICA GEOSYSTEMS AG." Appeal Br. 4. Appeal2013-003782 Application 11/843,263 Claimed Subject Matter Claims 1, 3, 12, 14, and 20 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A control unit comprising: means for entertaining; means for communicating; means for navigating; means for controlling steering of an off-road vehicle via a steering mechanism of the off-road vehicle; and a housing that houses the means for entertaining, means for communicating, means for navigating, and means for controlling steering of the off-road vehicle, the housing sized to be fittingly received in a pre-existing cavity of a dashboard in the off-road vehicle, the housing having a width of 182 mm and a height of 53 mm. Rejections2 I. Claims 1 and 2 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Larschan (US 2007/0050108 Al, pub. Mar. 1, 2007), Birnie (US 2009/0118904 Al, pub. May 7, 2009), and Lange (US 7,200,490 B2, iss. Apr. 3, 2007). II. Claims 3-5, 8, and 10-13 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Larschan, Birnie, Allen (US 7,853,404 B2, iss. Dec. 14, 2010) and Aral (US 7 ,065,440 B2, iss. June 20, 2006). III. Claims 6, 14--16, and 18-20 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Larschan, Birnie, Allen, Aral, Bringuel (US 2006/0200313 Al, pub. Sept. 7, 2006), and Rossow (US 7,548,804 B2, iss. June 16, 2009). 2 The Examiner has withdrawn the rejection of claim 1 under 35 U.S.C. Â§ 112, second paragraph, as indefinite. Ans. 12. 2 Appeal2013-003782 Application 11/843,263 IV. Claim 17 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Larschan, Birnie, Allen, Aral, Bringuel, Rossow, and Lu (US 2003/0130775 Al, pub. July 10, 2003). V. Claim 21 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Larschan, Birnie, Allen, Aral, Bringuel, Rossow, and Marrah (US 6,526,268B1, iss. Feb. 25, 2003). V. Claim 22 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Larschan, Birnie, Allen, Aral, Bringuel, Rossow, Marrah, and Shirley (US 4,642,770, iss. Feb. 10, 1987). ANALYSIS Rejection I The Examiner rejects claim 1 based on the combined teachings of Larschan, Birnie, and Lange. Non-Final Act. 9-10. The Examiner finds, among other things, that Larschan does not disclose means for controlling steering of an off-road vehicle via a steering mechanism of the off-road vehicle," as recited in claim 1. See Non-Final Act. 9-10. The Examiner relies on Birnie's disclosure to remedy this deficiency of Larschan's disclosure. More specifically, the Examiner finds that "Birnie discloses the means for controlling steering of the off-road vehicle via a steering mechanism of [an] off-road vehicle." Id. at 10 (citing Birnie, paras. 21, 24, 25, 40, 49-51). The Examiner concludes: It would have been obvious for one of ordinary skill in the art ... to combine the invention of Larschan and Birnie to include means for controlling steering of the vehicle in the housing to protect the control unit and conveniently assist the operator of the vehicle to steer the vehicle. 3 Appeal2013-003782 Application 11/843,263 Id. Accordingly, the Examiner's reason for combining the teachings of Larschan and Birnie is to "conveniently assist the operator of the vehicle to steer the vehicle." Id. The Appellants contend that the Examiner's rejection of claim 1, particularly the Examiner's reason for combining the teachings of Larschan and Birnie, is impermissibly conclusory. Appeal Br. 20-22. The Appellants' contention is persuasive for the following reasons. At the outset, we find that the Examiner's reasoning is based on applying Birnie's teaching of a pre-planned automatic steering control, which is used in a static environment, to Larschan's commercial motor vehicle. The Examiner's reasoning does not involve this prior art commercial motor vehicle being used in an environment other than that disclosed by Larschan. See infra. The Appellants point out that Larschan's and Birnie's vehicles, and their associated uses, are different. Appeal Br. 21-22. The Appellants point out that Larschan's vehicle "is only concerned with on-road commercial motor vehicles with a human driver subject to federal hour-of-service logging requirements and fuel log requirements," whereas Birnie's vehicle, "is concerned with pre-planned paths that a vehicle will follow to perform highly repetitive operations, for example, to 'follow a set path pattern over an area, for example when planting a field, conducting a search, or to reproduce a previously created path pattern at a later date."' See id. Based on the foregoing, the Appellants contend that the Examiner's reasoning is inadequately supported because it "fails to offer any evidence of when automatic control of the steering would be necessary in Larschan, e.g., when 4 Appeal2013-003782 Application 11/843,263 a commercial truck including a commercial truck driver would need to employ automatic steering." Id. at 22. We agree. Stated differently, the use ofBirnie's teaching of pre-planned automatic steering control, e.g., planting a field, is beneficial when the environment around the vehicle is static. The Examiner's reasoning, however, is not based on a use of Birnie's teaching in a static environment. The Examiner's reasoning, i.e., to "conveniently assist the operator of the vehicle to steer the vehicle," is applied to a commercial motor vehicle, as taught by Larschan, which is used in a dynamic environment, e.g., driving on a highway. And, the application of Birnie's pre-planned automatic steering control, which may be convenient in a static environment, to Larschan's commercial motor vehicle used in a dynamic environment introduces dangers in the dynamic environment. For example, it would seem plain to a person of ordinary skill in the art that applying pre-planned automatic steering control to a commercial motor vehicle on a highway would increase the risk of colliding with moving objects and other vehicles that share the highway. In sum, the Examiner fails to provide an explanation concerning why or how the inclusion of pre-planned automatic steering control as taught by Birnie, which is used for pre-planned paths, e.g., planting a field, would be safe, much less convenient, to a driver of Larschan' s commercial motor vehicle. In response, the Examiner finds that "Larschan and Birnie ... are very related arts" and "[i]t is well known in the art to provide automatic driving/steering control of [a] vehicle." Ans. 18. The Examiner's response also provides a definition for the term "tractor" and cites to paragraph 3 of the Appellants' Specification discussing types of "off-road vehicles." See 5 Appeal2013-003782 Application 11/843,263 id. at 18-19. The Examiner's response appears to suggest that Larschan's vehicle is a tractor so the vehicles of Larschan and Birnie are of the same type. However, the Examiner's suggestion that the vehicles of Larschan and Birnie may be of the same type does not persuasively explain why or how the inclusion of automatic steering control as taught by Birnie, which is used for pre-planned paths, e.g., planting a field, would be found convenient to a driver of Larschan's commercial motor vehicle, e.g., driving on a highway. Thus, the Examiner's rejection of independent claim 1 and dependent claim 2, which depends from claim 1, is not sustained. Rejections 11-V The rejections of independent claims 3, 12, 14, and 20 suffer from the same and/or similar deficiency in reasoning as discussed above. See Non- Final Act. 12, 15-16. Additionally, the remainder of the Examiner's rejections fail to cure the deficiency of the rejection of claims 3, 12, 14, and 20. Accordingly, the Examiner's rejections of independent claims 3, 12, 14, and 20, and claims that depend therefrom, are not sustained. DECISION We REVERSE the Examiner's decision rejecting claims 1---6, 8, and 10-22. REVERSED 6