Ex Parte Pillar

Patent Trial and Appeal BoardNov 27, 2012

10419649 (P.T.A.B. Nov. 27, 2012)

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. 10/419,649 04/21/2003 Duane R. Pillar 061300-0414 4159 26371 7590 11/28/2012 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER NGUYEN, CUONG H ART UNIT PAPER NUMBER 3663 MAIL DATE DELIVERY MODE 11/28/2012 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 DUANE R. PILLAR ____________________ Appeal 2010-010660 Application 10/419,649 Technology Center 3600 ____________________ Before: STEVEN D.A. McCARTHY, JOHN W. MORRISON, and NEIL T. POWELL, Administrative Patent Judges. POWELL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Duane R. Pillar (Appellant) appeals under 35 U.S.C. § 134 from a rejection of claims 1-42. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-010660 Application 10/419,649 2 The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An equipment service vehicle comprising: (A) a network communication link; (B) a plurality of vehicle subsystems; (C) a sensor, the sensor being configured to obtain health and operation information for a vehicle device; (D) an on-board diagnostic system including a test control module and an operator interface, the test control module and the operator interface being mounted on-board the vehicle, the on-board operator interface displaying a plurality of test options to an operator and receiving a selection of a test from the operator, the test control module being connected to at least some of the plurality of vehicle subsystems by way of the network communication link, the on-board test control module transmitting a request for information pertaining to the health and operation of the vehicle device on the network communication link; and (E) a test interface module, the test interface module being connected to the sensor, the test interface module being connected to the on-board test control module by way of the network communication link, the test interface module receiving the request for information pertaining to the health and operation of the vehicle device, the test interface module acquiring the requested information from the sensor and transmitting the requested information to the test control module; and wherein the test control module receives health and operation information from one of the respective vehicle subsystems or the test interface Appeal 2010-010660 Application 10/419,649 3 module or both and wherein the operator interface displays results of the test to the operator; wherein the selection is a first selection and the test is a first test, wherein the operator interface receives a plurality of additional selections of a plurality of additional tests, and wherein the operator interface displays results of the plurality of additional tests to the operator. The Rejections Claims 1-5, 7-9, 12-26, and 29-42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kempen (US 6,421,593 B1, issued Jul. 16, 2002) and Sonehara (US 5,555,171, issued Sep. 10, 1996). Claim 6, 10, 11, 27, and 28 stand rejected under § 103(a) as being unpatentable over Kempen, Sonehara, and Ng (US 5,445,347, issued Aug. 29, 1995). ANALYSIS Appellant argues claims 1-5, 7-9, 12-26, and 29-42 as a group.1 App. Br. 13-14. We select claim 1 as representative, and we treat claims 2-5, 7-9, 12-26, and 29-42 as standing or falling with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Although claims 6, 10, 11, 27, and 28 are not subject to the same ground of rejection, Appellant concedes that the latter claims may be “grouped” with claim 1. App. Br. 14. The Examiner finds that Kempen discloses a vehicle with all of the hardware recited in claim 1, and that Kempen’s hardware meets all of the limitations of claim 1 except that Kempen does not explicitly disclose the claim features “about displaying the test options and allowing the operator to 1 Although Appellant’s claim-grouping statements on pages 13 and 14 of the Appeal Brief do not explicitly mention claims 13, 14, 30, and 31, Appellant does not argue claims 13, 14, 30, and 31 separate from the other claims. Appeal 2010-010660 Application 10/419,649 4 select a test and additional tests.” Ans. 4. The Examiner further finds that Kempen generally discloses displaying data on an operator interface, and that Sonehara discloses configuring a system to perform those test procedures that the claim recites but Kempen does not explicitly disclose, including “displaying a plurality of test options to an operator and receiving a selection of a test from an operator.” Id. The Examiner determines that a person of ordinary skill in the art would have had reason to configure Kempen’s onboard system with software configured to execute the test procedures disclosed by Sonehara in order to facilitate diagnosing system problems on the vehicle, particularly “for an advantage of immediately recognizing . . . a vehicle problem.” Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine the disclosures of the references, thereby arriving at Appellant’s claimed invention. Id. Appellant disputes the Examiner’s rationale for combining the references, without disputing the Examiner’s findings that the references collectively disclose all of the claimed limitations. App. Br. 11-13; Reply Br. 2-4. Appellant argues that the Examiner’s rationale to combine lacks supporting evidence in the cited references, lacks rational underpinning, and stems from improper hindsight based on Appellant’s disclosure. Id. The evidence cited by the Examiner includes column 10, lines 41-44 and 61-65 of Kempen, which discloses that its onboard displays can advantageously provide information for troubleshooting problems of the vehicle. Ans. 4. In combination with this, the Examiner cites Sonehara as demonstrating that it was known in the art to perform troubleshooting or diagnostics by the claimed approach that includes displaying a plurality of Appeal 2010-010660 Application 10/419,649 5 test options to an operator and receiving a selection of a test from an operator. See Id. Consistent with the Examiner’s finding, these disclosures would have given a person of ordinary skill in the art reason to incorporate Sonehara’s diagnostic provisions into Kempen’s onboard system to further Kempen’s disclosed advantageous use of its onboard displays for troubleshooting. Thus, contrary to Appellant’s argument, the Examiner articulates a logical reason stemming from the disclosures of the cited references themselves that a person of ordinary skill in the art would have had for combining their teachings. Appellant further disputes the Examiner’s rationale for combining the references by arguing that the Examiner has not shown that a person of ordinary skill in the art would have had reason to mount Sonehara’s hardware onboard Kempen’s vehicle. App. Br. 12; Reply Br. 4. This argument is moot because of the Examiner’s finding that Kempen discloses the onboard hardware recited in the claim. Ans 3-4. Appellant also takes issue with the Examiner’s finding that the known purposes of onboard displays like Kempen’s include “trying to distribute as much related information as possible to users.” Reply Br. 3; see also Ans. 7. Appellant disputes the accuracy of this finding and argues that such a purpose would not lead a person of ordinary skill in the art to Appellant’s claimed invention because “[i]n claim 1, . . . results of the selected tests are displayed to the operator.” Reply Br. 3. Aside from seemingly misinterpreting the Examiner’s finding, this argument fails to establish error because it does not refute 1) the Examiner’s finding that Sonehara discloses the claim limitations in question, or 2) the above-discussed valid reasons Appeal 2010-010660 Application 10/419,649 6 articulated by the Examiner that a person of ordinary skill in the art would have had for combining the references. For the foregoing reasons, Appellant has not established error in the rejections of claims 1-42. DECISION We affirm the Examiner’s decision regarding claims 1-42. 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 Klh