Ex Parte Wagner et al

Patent Trial and Appeal Board

Apr 29, 2016

12807920 (P.T.A.B. Apr. 29, 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.
12/807,920 09/16/2010 Ronald E. Wagner BAEP-1285 6578
22500 7590 04/29/2016
BAE SYSTEMS
PO BOX 868
NHQ1-719
NASHUA, NH 03061-0868
EXAMINER
LAU, KEVIN
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
04/29/2016 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 RONALD E. WAGNER, ROBERT CHARLTON, and
ROBERT UFFORD
____________________

Appeal 2014-009176
Application 12/807,920
Technology Center 2600
____________________

Before ERIC S. FRAHM, CARL L. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–3 and 5–19. Claim 4 was canceled by Appellants’ Amendment
filed February 7, 2013. Claims 5 and 12–19 were canceled by Appellants’
After Final Amendment filed December 10, 2013, which added the subject
matter of canceled claim 5 to claim 1 (see Adv. Act. ¶ 4 (mailed December
19, 2013)). Thus, claims 1–3 and 6–11 remain rejected and fall within our
jurisdiction for appeal under 35 U.S.C. § 6(b).
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Appellants’ invention is a method for wirelessly providing pre-
operation condition information about commercial fleet vehicles (e.g., tire
pressure, fluid levels, etc.) to a maintenance center 16 and/or fleet
maintenance personnel 11 via a scanner 13 (Fig. 1; Abs.; Spec. 1–4; claim
1). Sensors on a vehicle are associated with radio frequency identification
(RFID) tags (Fig. 1, RFID tags and sensors 10) that can wirelessly transmit
vehicle condition information (see Fig. 1), including multi-level alerts (e.g.,
green, yellow, red) (see Fig. 2), to the maintenance center 16 where
diagnostics tools 18 can be used to provide a vehicle fitness alert 20 prior to
the vehicle’s deployment (claim 1; Figs. 1 and 2; Abs.).
For reasons that follow, we affirm the Examiner’s obviousness
rejection of claims 1–3 and 6–11.
Exemplary Claim
Sole independent claim 1 under appeal is exemplary, and reads as
follows (with emphases added to disputed portions of the claim):
1. A method for providing accurate information to fleet
maintenance personnel comprising the steps of:
utilizing RFID tags having a processor and associated
sensors positioned at a vehicle at different stations to sense
operational conditions at the vehicle; each of the sensors having
a displayed multi-level visual seriousness alert status driven by
the processor and based on the output of an associated sensor;
and
scanning the RFID tag displaying a visual seriousness alert
with a scanner carried by an individual who is in the proximity
of an RFID tag and associated sensor, thereby to ascertain the
presence of the individual at the RFID tag and the associated
sensor; and,
wirelessly connecting the scanned results to a
maintenance center having diagnostics and prognostics
algorithms to ascertain from the scanned data an estimate of
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vehicle fitness and to provide a fitness alert for the operation of
the vehicle prior to its deployment, the wirelessly connecting
comprising ascertaining the level of alert at a tag and
transmitting the level of the alert to the maintenance center.

Examiner’s Rejection
The Examiner rejected claims 1–3 and 6–11 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Olsen (US 2006/0055564
A1; published Mar. 16, 2006), Wilson (US 2003/0004624 A1; published
Jan. 2, 2003), Chung (US 2006/0055552 A1; published Mar. 16, 2006), and
Pham (US 2005/0235660 A1; published Oct. 27, 2005).1 Final Act. 2–8;
Ans. 2–7.
Issues on Appeal
Appellants present arguments to claims 1–3 and 5–11 as a group and
argue claim 1 as representative of the group (App. Br. 4–9). Claims 2, 3,
and 6–11 under appeal each recite similar subject matter as claim 1 by virtue
of their dependency upon sole independent claim 1 (see App. Br. 10–12,
Claims App.). Accordingly, we select claim 1 as representative of the group
of claims consisting of claims 1–3 and 5–11 and address representative
independent claim 1 in our analysis infra.
Based on Appellants’ arguments in the Appeal Brief (App. Br. 4–9)
and the Reply Brief (Reply Br. 2–8), the following two issues are presented
on appeal:

1 The obviousness rejection of claim 5, as well as the three other
obviousness rejections of claims 12–19 made by the Examiner in the Final
Rejection (see Final Act. 8–13) are moot and not before us, since claims 5
and 12–19 were canceled by Appellants in the After Final Amendment filed
December 10, 2013.
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(1) Did the Examiner err in rejecting claims 1–3 and 6–11 as being
obvious because Olsen, Wilson, Chung, and Pham are not properly
combinable and are non-analogous to Appellants’ invention recited in
representative independent claim 1?
(2) Did the Examiner err in rejecting claims 1–3 and 6–11 as being
obvious because the combination of Olsen, Wilson, Chung, and Pham fails
to teach or suggest a method for providing accurate information to fleet
maintenance personnel, including wirelessly connecting scanned results to a
maintenance center by transmitting the level of a multi-level alert to the
maintenance center, as set forth in representative independent claim 1?

ANALYSIS
We have reviewed the Examiner’s rejection (Final Act. 2–8; Ans. 2–
7) in light of Appellants’ contentions in the Appeal Brief (App. Br. 4–9) and
Reply Brief (Reply Br. 2–8) that the Examiner has erred in light of the
Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 8–
10). We disagree with Appellants’ conclusions as to representative claim 1.
With regard to representative claim 1, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the Action from which this
appeal is taken (Final Act. 2–5; Ans. 2–5), as well as the amplifications
provided in paragraph 4 of the Advisory Action mailed December 30, 2013,
and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (see Ans. 8–10). We concur with the
conclusions reached by the Examiner as to representative claim 1, and
highlight and address specific findings and arguments for emphasis as
follows.
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Issue (1): Analogous Art and Motivation to Combine
A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention. In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011); Innovention Toys, LLC v. MGA
Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
A reference is considered analogous prior art: (1) if the reference is from the
same field of endeavor as the claimed subjected matter, regardless of the
problem addressed, or (2) if “the reference still is reasonably pertinent to the
particular problem with which the inventor is involved,” even though the
reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d
at 1325.
The “field of endeavor” test asks if the structure and function of the
prior art is such that it would be considered by a person of ordinary skill in
the art, because of the similarity to the structure and function of the claimed
invention as disclosed in the application. Bigio, 381 F.3d at 1325–27. It is
necessary to apply “common sense” in “deciding in which fields a person of
ordinary skill would reasonably be expected to look for a solution to the
problem facing the inventor.” Id. at 1326 (internal citations and quotation
marks omitted).
As to the “reasonably pertinent” test: A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor’s endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in
considering his problem. Thus, the purposes of both the invention and the
prior art are important in determining whether the reference is reasonably
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pertinent to the problem the invention attempts to solve. If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in
an obviousness rejection. An inventor may well have been motivated to
consider the reference when making his invention. If it is directed to a
different purpose, the inventor would accordingly have had less motivation
or occasion to consider it. Clay, 966 F.2d at 659.
In the instant case on appeal, Olsen (see ¶¶ 7, 10, 12, 23, and 70; Figs.
1a, 1b, 2, and 3; Abs.) and Wilson (see ¶¶ 8, 21, 40, and 44; Abs.; claim 11)
are from the same field of endeavor as the claimed subjected matter of
claims 1–3 and 6–11, namely that of an RFID tag and sensor system for
monitoring operational conditions of a vehicle and transmitting data for
diagnostic purposes. We also agree with the Examiner (Ans. 8) that Olsen
and Wilson are concerned with the same problem as Appellants’ recited
subject matter — that of conveying information locally at an RFID tag and
conveying more alert information to a user.
Chung’s and Pham’s disclosures of conveying alert information to a
user are each reasonably pertinent to the particular problem with which the
inventor is involved, namely that of providing a sufficient amount of alert
information to a user for diagnostic purposes. For example, Chung (¶¶ 96,
167, and 206; Abs.) and Pham (¶¶ 90 and 91) are both concerned with the
same problem as Appellants — presentation of sensed conditions or
diagnostic/alert information to an operator on a visual display. Chung
(¶¶ 96, 167, and 206; Abs.) also has the same purpose and field of endeavor
as the claimed invention, namely that of using sensors and RFID tags to
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transmit condition data about objects, and visually displaying condition
data/messages to an operator with a user interface and/or display.
The Examiner’s articulation of the motivations to combine the
teachings and suggestions of Olsen, Wilson, Chung, and Pham is reasonable
and well-founded (see Final Act. 3–5; Ans. 3–5, 9, and 10). We agree with
the Examiner that combining the references would have been within the
knowledge and skill of a person having ordinary skill in the art, and would
not have involved impermissible hindsight (see Ans. 9–10).
In view of the foregoing, we agree with the Examiner (Ans. 8–9) that
Olsen, Wilson, Chung, and Pham are analogous to the subject matter of
claim 1, and thus, are properly combinable.
Issue (2): Transmitting Level of Alert to the Maintenance Center
The combination of Olsen, Wilson, Chung, and Pham teaches or
suggests a method for providing information to fleet maintenance personnel,
including wirelessly connecting scanned results to a maintenance center by
transmitting the level of a multi-level alert to the maintenance center, as set
forth in representative independent claim 1. We agree with the Examiner
(Ans. 9) that it would have been obvious to use green, yellow, and/or red
display elements (i.e., a multi-level or fitness alert) to better convey
diagnostic information and alert levels and provide a quicker and more
accurate diagnosis as taught by Pham, and to send scanned condition data
via RFID tags to a remote location for display of conditions/alert levels to an
operator as taught by Chung, for purposes of more effectively diagnosing a
vehicle’s sensed and transmitted conditions at a remote station/location as
taught by Wilson, or a fleet facility as taught by Olsen. In this light,
Appellants’ contentions that (i) the combination of Olsen, Wilson, Chung,
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and Pham fails to teach or suggest “wirelessly connecting comprising
transmitting the level of the alert to the maintenance center” as recited in
claim 1 (App. Br. 4); and (ii) none of the applied references teach or suggest
“transmission of the level of alert sensed by each of the sensors to the
maintenance cent[er]” (App. Br. 8), are unpersuasive.
Accordingly, we sustain the obviousness rejection of representative
claim 1, as well as claims 2, 3, and 6–11 ultimately depending therefrom and
grouped therewith.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1–3 and 6–11 as
being obvious over the combination of Olsen, Wilson, Chung, and Pham
because Olsen, Wilson, Chung, and Pham are properly combinable and are
each analogous to Appellants’ invention recited in representative
independent claim 1.
(2) The Examiner did not err in rejecting claims 1–3 and 6–11 because
the properly made combination of Olsen, Wilson, Chung, and Pham teaches
or suggests the method for providing accurate information to fleet
maintenance personnel, including wirelessly connecting scanned results to a
maintenance center by transmitting the level of a multi-level alert to the
maintenance center, as set forth in representative independent claim 1.

DECISION
The Examiner’s obviousness rejection of claims 1–3 and 6–11 under
35 U.S.C. § 103(a) is affirmed.
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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