Ex Parte Wallace

Patent Trial and Appeal BoardAug 1, 2013

11801077 (P.T.A.B. Aug. 1, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DANIEL JOHN WALLACE ____________________ Appeal 2011-007460 Application 11/801,077 Technology Center 2100 ____________________ Before, MICHAEL W. KIM, NINA L. MEDLOCK, and PHILIP J. HOFFMANN, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007460 Application 11/801,077 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We AFFIRM.1 BACKGROUND Appellant’s invention relates to a system and method for automatic asset classification (Spec., para. [0008]). Claim 1, reproduced below, is representative of the subject matter on appeal: 1. A method for automatic asset classification comprising: receiving a plurality of asset characteristics from more than one reporting source, each of said reporting sources associated with said asset wherein at least one of said plurality of reporting sources is not coupled with said asset; automatically associating said asset characteristic with a graphical representation of said asset based on said asset characteristic; and providing said graphical representation of said asset on a graphical user interface (GUI). 1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,” filed September 14, 2010) and Reply Brief (“Reply Br.,” filed February 22, 2011) and the Examiner’s Answer (“Ans.,” mailed December 22, 2010). Appeal 2011-007460 Application 11/801,077 3 THE REJECTION The following rejection is before us for review: Claims 1-26 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Arakawa (US 2004/0148083 A1, pub. Jul. 29, 2004). ANALYSIS Independent claim 1 and dependent claims 2-9 We are not persuaded that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b) by Appellant’s argument that Arakawa fails to disclose “receiving a plurality of asset characteristics from more than one reporting source, each of said reporting sources associated with said asset wherein at least one of said plurality of reporting sources is not coupled with said asset,” as recited in the claim (App. Br. 8-10 and Reply Br. 1-8). Instead, we agree with, and adopt the Examiner’s response to Appellant’s argument as set forth at pages 7-9 of the Answer. Appellant argues that Arakawa teaches the undesirability of using a portable telephone and, thus, teaches away from “at least one of said plurality of reporting devices is not coupled with said asset” (App. Br. 9 and Reply Br. 5-6). However, the Federal Circuit has held that a teaching away occurs when a reference discourages one skilled in the art from following the claimed path, or when the reference would lead one skilled in the art in a direction divergent from the path that was taken by the applicant. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the Appeal 2011-007460 Application 11/801,077 4 alternatives when the disclosure does not criticize, discredit, or otherwise discourage the solution claimed). Here, Arakawa does not criticize, discredit, or otherwise discourage the use of a portable telephone to report information related to an asset, e.g., a construction machine. Instead, Arakawa merely observes that construction machines often operate in remote areas and that such locations are often outside areas in which communication via portable telephone is possible (Arakawa, para. [0017]). Appellant has not shown, nor can Appellant show, that Arakawa criticizes or otherwise discourages the use of a portable telephone as a reporting device in areas where communication via a portable telephone is available. In view of the foregoing, we will sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(b). We also will sustain the Examiner’s rejection of dependent claims 2-9, which were not separately argued. Independent claims 10 and 22 and dependent claims 11-21 and 23-26 Appellant does not provide any argument in support of the patentability of independent claims 10 and 22 except to assert that these claims, like claim 1, recite “wherein at least one of said plurality of reporting devices is not coupled with said asset” (App. Br. 10). Therefore, we will sustain the Examiner’s rejection of claims 10 and 22 under 35 U.S.C. § 102(b) for the same reasons as set forth above with respect to claim 1. We also will sustain the Examiner’s rejection of claims 11-21 and 23-26, which depend from claims 10 and 22, respectively, and were not separately argued. Appeal 2011-007460 Application 11/801,077 5 DECISION The Examiner’s rejection of claims 1-26 under 35 U.S.C. § 102(b) is affirmed. 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). AFFIRMED msc