Ex Parte Otsubo et al

Patent Trial and Appeal Board

Nov 23, 2016

12270160 (P.T.A.B. Nov. 23, 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.
12/270,160 11/13/2008 Tom Otsubo 225851 1664
91959 7590 11/28/2016
GE GPO- Transportation- The Small Patent Law Group
901 Main Avenue
3rd Floor
Norwalk, CT 06851
EXAMINER
PECHE, JORGE O
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
gpo.mail@ge.com
marie.gerrie@ge.com
lori.E.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOM OTSUBO, WOLFGANG DAUM, CRAIG ALAN STULL,
GREGORY HANN, and PHILLIP DANNER
Appeal 2014—008158
Application 12/270,160
Technology Center 3600
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tom Otsubo et al. (Appellants) seek our review under 35U.S.C. § 134
of the Examiner’s Final Rejection of claims 1—9.1,2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM—IN—PART.
1 According to Appellants, the real party in interest is General Electric
Company. Appeal Br. 4.
2 Claims 10-20 are withdrawn. Id.
Appeal 2014—008158
Application 12/270,160
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A system comprising:
a receiving device configured to collect signal aspect
information for a powered system that performs a mission,
wherein the signal aspect information denotes a traffic condition
of at least one segment on which the powered system is
configured to pass, the signal aspect information being received
from a remote location;
one or more processors configured to determine a speed
limit of the powered system based at least in part on the signal
aspect information; and
a control system connected to the powered system
configured to operate the powered system in response to the
speed limit, wherein the control system is configured to increase
a speed of the powered system if the speed limit determined is
greater than a current speed of the powered system.
REJECTIONS
The following Examiner’s rejections are before us for review.3
1. Claims 1—9 are rejected under 35U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 1,2, and 4—7 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Boggio (US 4,279,395, iss. July 21, 1981)
and McMullen (US 7,219,067 Bl, iss. May 15, 2007).
3 While claim 2 was additionally rejected under 35 U.S.C. § 112, first
paragraph, for failing to disclose written description support for “the mission
plan specifying motoring power settings for plural segments,” we understand
that rejection is withdrawn. See Ans. 17—18; see also Reply Br. 7.
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Application 12/270,160
3. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Boggio, McMullen, and Daum (US 7,522,990 B2, iss.
Apr. 21,2009).
4. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Boggio, McMullen, and Sugita (US 6,732,023 B2, iss.
May 4, 2004).
5. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Boggio, McMullen, and Haley (US 4,561,057, iss. Dec.
24, 1985).
ANALYSIS
First Ground of Rejection: Lack of Written Description
We are persuaded by Appellants’ arguments that the Examiner erred
in rejecting independent claim 1 and dependent claims 2—9 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement. See Appeal Br. 7—14; see also Reply Br. 3—7.
According to the Examiner, “[t]he claim(s) contains subject matter
which was not described in the [Specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor(s), at
the time the application was filed, had possession of the claimed invention,”
because the Specification “fails to disclose [that] ‘the signal aspect
information denotes a traffic condition of at least one segment on which the
powered system is configured to pass’ [] and its critical role with respect to
the scope of the inventions.” Final Act. 3 (citing Specification | 34)
(emphasis deleted).
Having reviewed paragraphs 11, 26, 29, 35, 38, and 42, cited by
Appellants in support for the limitation, the Examiner “concluded that
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Application 12/270,160
support is not found for the limitation,” as recited by claim 1. Id. at 4.
While observing that the specification “discloses ‘signal aspect information’
to indicate whether or not a segment track is clear, occupied by a train, or
subject to some other speed restriction,” the Examiner reasons that those
paragraphs do not “provide concise specification support for the above
limitation.” Id. The Examiner repeats the observation in the Answer,
finding with respect to various paragraphs of the Specification relied on by
Appellants, that “the signal aspect information does not denote a traffic
condition of at least one segment on which the power system is configured
to pass.” Ans. 6—8 (emphasis added). The Examiner concludes “[t]he term
‘signal aspect information’ within the specification was never specifically
mentioned to have ‘traffic condition of at least one segment’ .... because
the entire specification focuses on the determination of speed limit based on
fuel efficiency rather than traffic condition.” Id. at 8.
Appellants take issue with the Examiner’s analysis and conclusions,
pointing out, inter alia, that “the Office Action’s own comments
demonstrate that the limitation at issue is supported by the Specification,”
referring in particular to the Examiner’s reference to paragraph 11 of
Appellants’ Specification, and reasoning that “whether a segment is clear or
occupied by a train are [both] examples of traffic conditions.” Appeal Br.
12; see also Reply Br. 5—7. We agree with Appellants that the Examiner is
incorrectly reading the Specification.
Based on the arguments presented by Appellants in the Appeal Brief
at pages 7—12, and the Reply Brief at pages 4—7, we do not sustain the
rejection of claims 1—9 under 35 U.S.C. §112, first paragraph.
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Second Ground of Rejection: Obviousness of Claims 1, 2, and 4—7
over Boggio and McMullen
Claims 1 and 5—7
Appellants argue claims 1 and 5—7 together in contesting the rejection
of these claims as obvious over Boggio and McMullen. See Appeal Br. 14—
22; see also Reply Br. 8—13. We select claim 1 as the representative claim
for this group, and the remaining claims stand or fall with claim 1. See 37
C.F.R. 41.37(c)(l)(iv). Appellants present arguments under separate
headings for dependent claims 2 and 4 (Appeal Br. 22—24; see also Reply
Br. 13—15), which we address infra.
The Examiner relies on Boggio for disclosing a powered system
including, inter alia, “a control system connected to the powered system
configured to operate the powered system in response to the speed limit,” as
recited by claim 1. Final Act. 7 (citing Boggio, col. 1,11. 6—13; col. 2,11. 21—
36; col. 6,11. 49-60; col. 5,11. 2A-26; col. 5,11. 28-57; and Fig. 1). While
observing that Boggio “is silent regarding a control system configured to
increase a speed of the powered system if the speed limit determined is
greater than a concurrent speed of the powered system,” the Examiner finds
that McMullen discloses a railroad transportation management system (10)
including, inter alia, locomotive sub-assembly (22) and schedule sub-system
(28), for “making a determination that a train speed may be increased
{increase a speed of the powered system if the speed limit determined is
greater than a current speed of the powered system) while remaining within
a set of limits or rule (e.g. speed limit) and not increasing the total delays for
system (10).” Id. at 9—10. Furthermore, the Examiner finds McMullen
discloses that “schedule sub-system (28) transmits data to locomotive sub-
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Application 12/270,160
system (22) to increase the speed of the train to reduce the amount of delay
for that given train (increase a speed of the powered system).'’’ Id. at 10
(citing McMullen, col. 2,11. 4—63; col. 6,11. 10-59; and Figs. 1 and 2).
Based on the foregoing teachings of McMullen, the Examiner reasons
that “it would have been obvious [to modify Boggio] to incorporate, within
[its] speed control apparatus for railroad trains, a process for increasing the
speed of a train to reduce the amount of delay for that given train while
remaining within a set of limits or rule (e.g. speed limit),” and that “[d]oing
so would enhance an effective speed control apparatus for railroad trains.”
Id. at 10—11.
We have reviewed the Examiner’s rejection of claim 1 in light of
Appellants’ numerous arguments in the Appeal Brief and the Reply Brief.
We disagree with Appellants’ conclusions, and agree with, and adopt as our
own, the Examiner’s findings and conclusions of law as set forth in the
Examiner’s Answer. See Ans. 18—39. Specific arguments are highlighted
and addressed below for emphasis.4
First, Second and Third Arguments
Appellants contend that claim 1 recites “one or more processors
configured to determine a speed limit of the powered system based at least in
part on the signal aspect information,” while “in Boggio the signal aspect
information is only used in determining the maximum stopping distance,
with the stopping distance [then] used to determine the ‘critical’ or
‘maximum’ speed of Boggio.” Appeal Br. 16—17. However, we agree with
4 The Examiner identifies Appellants’ contentions as the first through ninth
arguments. We will do likewise.
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the Examiner’s reasoning as set forth at pages 20—21, and repeated at pages
23—24 and pages 25—26 of the Examiner’s Answer, that in the Final Action
at page 6, the term “signal aspect information” had been mapped to include
an “advance traffic condition signal received from wayside signal system,'1'’
as disclosed at Boggio, at column 2, lines 42-49.
In particular, we agree with the Examiner that
[b]y giving the broadest reasonable interpretation to the argued
claim limitation^] the claim limitation can refer to a processor
unit configured to calculate “a critical or maximum value of train
speed from which emergency braking of the train will stop the
train before it arrives at the first stop signal in advance” based on
advance traffic conditions generated by wayside signal system
and variable train parameters (e.g. at least partly on the signal
aspect information).
Ans. 21. Appellants do not apprise us that the Examiner’s rationale is in
error. See Reply Br. 8—10.
Fourth Argument
Appellants next contend that “as Boggio is directed to braking
applications, Boggio is unconcerned with speeding up a train and does not
teach increasing speed, let alone increasing speed in response to determining
a ‘maximum’ or ‘critical’ speed,” and that it would not be obvious “to
modify Boggio or combine Boggio with other art to increase speed, as
Boggio is directed to limiting speed for emergency braking.” Appeal Br. 18.
However, Appellants are simply attacking Boggio in isolation for lacking
support for findings not relied upon by the Examiner, rather than addressing
the Examiner’s combination of Boggio and McMullen. Nonobviousness
cannot be established by attacking references individually when the rejection
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is predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
While acknowledging in the Final Action that Boggio “is silent
regarding a control system configured to increase a speed of the powered
[system] if the speed limit determined is greater than a current speed of the
powered system,” the Examiner explained that “there is [no disclosure in
Boggio] that the railroad locomotive or train cannot increase its speed.”
Ans. 28. Furthermore, the Examiner explained that the rejection relies on
McMullen “to modify the primary reference by incorporating, within the
speed control apparatus for railroad trains [taught by Boggio], a process for
increasing the speed of a train to reduce the amount of delay for that given
train while remaining within a set of limits or rule (e.g. speed limit).'1'’ Id.
Fifth Argument
Although acknowledging that column 2, lines 2—\ of Boggio discloses
“providing] a permissive operating signal while the existing speed is less
than the calculated maximum speed,” Appellants contend that “Boggio may
not be modified to increase speed, as such a modification would change a
principal of operation of Boggio and/or render Boggio unfit for performing
an intended purpose.” Appeal Br. 19. However, Appellants offer no
explanation or evidence supporting the argument that increasing speed
would change the principal of operation of Boggio or render Boggio unfit
for its intended purpose. We are instructed that “[attorney’s arguments in a
brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (citation omitted); see also In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) (holding that lawyer arguments and conclusory
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statements which are unsupported by factual evidence are entitled to little
probative value).
Sixth and Eight Arguments
Appellants also contend that “McMullen merely teaches increasing
speed, for example, if such an increase will not cause delays to other trains,”
but “does not teach a speed limit based at least partly on signal aspect
information denoting a traffic condition, let alone increasing speed based on
a determined speed limit of a vehicle as fully set forth in Claim 1.” Appeal
Br. 19, 22. However, Appellants are simply attacking McMullen in isolation
for lacking support for findings not relied upon by the Examiner, rather than
addressing the Examiner’s combination of Boggio and McMullen.
Nonobviousness cannot be established by attacking references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co., 800 F.2d at 1097. As the Examiner again explains,
the reason for citing McMullen is “to teach a mechanism or process for
increasing the speed of a train while remaining within a set of limits or rules
(e.g. speed limit),” and that “this teaching is equivalent to the claim
limitation: ‘to increase a speed of the powered system if the speed limit
determined is greater than current speed of the power system. Ans. 31—32;
see also Id. at 36.
Seventh and Ninth Arguments
Appellants also contend that the teachings of Boggio and McMullen
“may not be stretched so far as to be considered to teach ‘a control system
connected to the powered system configured to operate the powered system
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in response to the speed limit, wherein the control system is configured to
increase a speed of the powered system if the speed limit determined is
greater than current speed of the powered system, ’ and does not render
Claim 1 obvious.” Appeal Br. 19-20. Appellants also repeat earlier
contentions that because “McMullen does not teach a speed limit based at
least partly on signal aspect information denoting a traffic condition” and
because “Boggio does not teach increasing speed if a speed limit is
determined greater than a current speed,” “that the combination of Boggio
and McMullen does not render obvious increasing speed as set forth by
Claim 1.” Appeal Br. 22.
However, the Examiner reasons that because “the process for
increasing a speed of a locomotive to a predetermined speed, e.g. calculated
speed limit, can be considered as a standard operation, as being shown in
[McMullen],” and because Boggio “does not disclose a railroad locomotive
or train that cannot increase its speed at least from a particular speed (e.g. 0
Km/h or 5 Km/h) to the maximum/critical speed value,” that the rejection of
claim 1 is not a “stretched rejection” for the reasons stated in the Final
Action. Ans. 34, 38—39. We agree.
In view of the foregoing, we find that the Examiner has provided
“reasoning with some rational underpinning to support the legal conclusion
of obviousness” based on the combined teachings of Boggio and McMullen.
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with approval in
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
For these reasons, we sustain the rejection of claims 1 and 5—7 as
unpatentable over Boggio and McMullen.
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Claim 2
In regard to claim 2, reciting a “control system [that] is configured to
generate a mission plan,” the Examiner finds that Boggio discloses “re­
planning the mission plan comprising re-planning at least one of the
motoring power settings.” Final Act. 9. The Examiner also reasons that
“processor means (1) [of Boggio] is configured to process signal
representing train movement, actual or current train speed, and advance
traffic conditions.” Ans. 41
However, we agree with Appellants that “a mission plan as claimed
sets moving power at upcoming [future] segments,” while Boggio “does not
teach settings or adjusting settings for future segments, but only current
operation, as Boggio continuously determines the maximum speed based on
braking power.” Appeal Br. 23; see also Reply Br. 13.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claim 2 over Boggio and McMullen.
Claim 4
While dependent claim 4 further recites a data storage device, the
Examiner looks to Boggio for disclosing “processing means [that] can
comprise a memory device to store the received advance traffic condition for
further implementation or analysis and to store at least one algorithm for
calculating the maximum allowable speed from the received advance traffic
condition for a given track or traveling area.” Final Act. 11.
Appellants explain that, contrary to the Examiner’s rejection, “Boggio
teaches continuous determination of a critical or maximum speed based on
required stopping distance” so that “storage of information for ‘further
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implementation or analysis’ would not be of use to the continuous
calculation of maximum train speed based on stopping distance of Boggio.”
Appeal Br. 24.
Without explaining how the rejection relates to claim 4, the Examiner
further responds that “conventional track signal repeater block 4 represents
cab signal apparatus of any known type for repeating wayside signals on
board the train,” and that “[t]his unit may also be used to provide signals,
separately or combined with the traffic indication [e.g. advance traffic
condition], representing advance track parameters, which are stored in a
memory element and read out in accordance with the location of the train as
it moves along the stretch of track.” Ans. 42^43 (citing Boggio, col. 4,11.
18—31) (emphasis removed).
While the Examiner’s rejection is somewhat unclear, we ultimately
agree with Appellants that “mere storage of track parameters in a database
does not teach a database used to determine the speed limit or store the
signal aspect information as fully set forth by Claim 4.” Reply Br. 15.
Thus, we do not sustain the Examiner’s rejection of claim 4 over
Boggio and McMullen.
Third and Fourth Grounds of Rejection: Obviousness of Claim 3 over
Boggio, McMullen, and Daum; and of Claim 8 over Boggier, McMullen, and
Sugita
Appellants do not present separate arguments for the patentability of
claims 3 and 8, which depend from claim 1. See generally Appeal Br.; see
also Reply Br. Accordingly, we sustain the rejections of claim 3 over
Boggio, McMullen, and Daum, and Claim 8 over Boggier, McMullen, and
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Sugita, for the same reasons stated above with respect to the rejection of
claim 1 over Boggio and McMullen.
Fifth Ground of Rejection: Obviousness of Claim 9 over Boggio,
McMullen, and Haley
While Boggio and McMullen do not “disclose a notification system
configured to notify an operator when a speed of the powered system is
changed in response to the speed limit,” the Examiner finds that Haley
teaches “an apparatus and method for monitoring motion of a railroad train
by determining the speed, the rate of change of the speed, and the distance
traveled of a train and displaying the data via a display means.” Final Act.
14 (citing Haley, col. 1,11. 5—15; col. 2,11. 25—34; col. 5,11. 1—10; and Figs.
1,2).
From the foregoing teaching of Haley, the Examiner determines that
“it would have been obvious ... to further modify Boggio ... to incorporate,
within the process means, a process for displaying a locomotive speed and a
rate of change of the speed,” and that “[djoing so would enhance a speed
control process and apparatus for railroad trains capable to provide an
effective speed control based on advance traffic condition signal received
from a wayside signal system and to display real time locomotive speed and
rate of change of the speed.” Id.; see also Ans. 44.
Appellants respond by first quoting from the abstract of Haley and
then contending that Haley “is directed to monitoring and storage of speed,
and does not teach ‘a notification system configured to notify an operator
when a speed of the powered system is changed in response to the speed
limit,’” as recited by claim 9. Appeal Br. 25. Appellants reason “that a
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mere teaching of monitoring speed does not teach notifying an operator
when a speed changes for a particular reason, let alone when a speed is
increased by a control system as set forth by Claim 1 (from which Claim 9
depends), let alone a notification system configured to notify an operator
when a speed is changed in response to a determined speed limit as fully set
forth by Claim 9.” Id. Appellants repeat the contention in the Reply Brief,
reasoning that “a mere display of speed or rate of change of speed does not
teach a display of a reason for a speed or rate of change of speed.” Reply
Br. 16.
However, Appellants misread Haley, which discloses at column 5,
lines 1—5 that an on-board unit 2 “is mountable in a suitable location in the
train, such as in the locomotive within visual access of the engineer.”5
Thus, we are persuaded by the Examiner’s reasoning regarding the
teaching of Haley. “[I]f a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
For the foregoing reasons, we sustain the rejection of claim 9 as
unpatentable over Boggio, McMullen and Haley.
5 See also Haley, col. 2,11. 25—34, which teaches, inter alia, “monitoring the
motion of a railroad train [that] gives real time [operator] displays of speed,
acceleration/deceleration, and distance.”
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DECISION
We affirm the Examiner’s rejection of claims 1, 3, and 5—9.
We reverse the Examiner’s rejection of claims 2 and 4.
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)(l)(iv).
AFFIRMED-IN-PART
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