Terence Mullin

Patent Trials and Appeals Board

Apr 2, 2021

2020004674 (P.T.A.B. Apr. 2, 2021)

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.
11/248,100 10/12/2005 Terence J. Mullin 1428-001.101 3164
22145 7590 04/02/2021
Klein, O''Neill & Singh, LLP
30 CORPORATE PARK
SUITE 211
IRVINE, CA 92606
EXAMINER
ERMLICK, WILLIAM D
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
KOS_Docketing@koslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TERENCE J. MULLIN
____________

Appeal 2020-004674
Application 11/248,100
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1, 3–7, 10, and 12–31, which are all the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Terence J. Mullin as the real party in
interest. Appeal Br. 2.
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2
CLAIMS
Appellant’s disclosure relates to monitoring devices equipped with
“condition sensors” and “delivering appropriate instruction in real time to
device users as needed.” Spec. ¶ 2.
Claims 1, 10, and 16 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A system for monitoring an electromechanical device and
automatically delivering content-appropriate instructional
information to a user interface, comprising:
an electromechanical device having at least one sensor adapted
to detect a physical condition of a mechanical component of the
device and to generate a sensor signal indicating the detected
condition;
a content server in continuous electronic communication with
the device during normal and abnormal operation of the device and
adapted to receive the sensor signal in real time as it is generated and
to analyze the sensor signal, the content server comprising a device
database having technical information concerning sensor signals,
comprising a library of graphics-based instructional material
corresponding to particular sensor signals, and a criteria for
determining whether a sensor signal indicates a potential need for
instructional material;
wherein the content server is adapted to automatically
access the device database upon receiving the sensor signal to
determine the meaning of the sensor signal, whether
instructional material is indicated, and to identify appropriate
instructional material based upon the sensor signal if indicated;
wherein instructional material is determined to be
indicated when the content server determines that a detected
device condition corresponding to the sensor signal should be
changed to a desired device condition, and wherein such change
requires physical intervention with the mechanical component
of the device by a user; and
a graphical user interface positioned at or adjacent the
device during normal and abnormal operation of the device;
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wherein the content server is configured to automatically
communicate the identified graphics-based instructional
material to the user interface, the graphics-based instructional
material being configured to instruct the user in a step-by-step
manner how to physically intervene with the mechanical
component of the device in order to change the device from the
detected condition to the desired condition.

Appeal Br. 20 (Claims App.).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sisley US 5,467,268 Nov. 14, 1995
Williams US 5,754,451 May 19, 1998
Thiel US 6,381,509 B1 Apr. 30, 2002
Mitchell US 6,574,672 B1 June 3, 2003
Berg US 2002/0022969 A1 Feb. 21, 2002
Edwards US 2002/0156695 A1 Oct. 24, 2002

REJECTIONS
Claims 1, 6, 16–18, and 29–31 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Williams. Final Act. 3.
Claims 3–5 and 23–26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams and Edwards. Final Act. 9.
Claims 7, 21, and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams and Mitchell. Final Act. 12.
Claims 10, 12, 19, and 28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Williams and Berg. Final Act. 13.
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Claims 13–15 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams, Berg, and Sisley. Final Act. 16.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Williams and Thiel. Final Act. 18.

ANALYSIS
Anticipation by Williams (Claims 1, 6, 16–18, and 29–31)
Claims 1, 6, 29, and 30
Appellant contends that Williams fails to disclose all limitations of
claim 1. Appeal Br. 11–13.
First, claim 1 recites that “the content server is configured to
automatically communicate the identified graphics-based instructional
material to the user interface.” Appeal Br. 20 (Claims App.) (emphasis
added). Appellant contends that “Williams will display a series of images if
the operator needs them . . . . Thus, Williams does not appear to teach
automatically communicating any instructional material to a user.” Id. at 12
(citing Williams col. 3, ll. 65–66).
The Examiner responds that Williams’ “system acts to communicate a
series of images to the user if requested by the user, wherein the
communication itself occurs autonomously by the computer without any
external assistance.” Ans. 23 (citing Williams col. 1, ll. 59–67, col. 3, l. 60–
col. 4, l. 6). The Examiner submits, essentially, that claim 1 does not require
that the communication “be done without any human prompting the need for
such materials,” as this “is not commensurate with the scope of the claims.”
Id.
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Appellant’s contention is unpersuasive. As disclosed in Williams,
when preventative maintenance device 10 determines that a part is
experiencing a fault, the device causes pictorial views (i.e., a plurality of
views) to be displayed on display device 32. Williams, col. 3, ll. 62–65.
This would involve “communicating” the pictorial views. Williams then
explains, “[i]f the operator is unsure of the part location or how to service
the part, a series of images are displayed on the display device 32 to direct
the operator. The series of images are utilized to lead the operator through .
. . a fault solution procedure.” Id. at col. 3, l. 65–col. 4, l. 3.
Accordingly, Williams discloses that pictorial views are displayed on
display device 32 when a fault occurs. Williams does not appear to disclose
that the operator must first request the pictorial views for them to be
displayed. We interpret Williams’ description that, “[i]f the operator is
unsure of the part location or how to service the part,” to imply that the
operator may not be “unsure of the part location or how to service the part.”
In other words, the pictorial views that are displayed on display device 32
can be sufficient to enable the operator to locate the part and service it.
Furthermore, we agree with the Examiner that claim 1 does not recite any
limitation that precludes the operator in Williams from obtaining additional
information for display on display device 32, such as the series of images.
Claim 1 also recites that “the graphics-based instructional material
being configured to instruct the user in a step-by-step manner how to
physically intervene with the mechanical component of the device.” Appeal
Br. 20 (Claims App.) (emphasis added). Appellant asserts, “since
Williams’s images are simply images of ‘the manufacturing equipment 12’
. . . Williams cannot be taken to teach an operat[o]r ‘how to physically
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intervene’ with any components.” Id. at 12 (citing Williams, col. 3,
ll. 60–61).
This contention is unpersuasive. Williams discloses that “the display
device displays an image of the machine including an image of the
component therein, wherein the image of the component is highlighted in a
predetermined manner to indicate the fault condition.” Williams, col. 1,
ll. 59–63 (emphasis added). Accordingly, the displayed images in Williams
are not limited to images of manufacturing equipment 12, as Appellant
seems to contend.
Appellant further contends that Williams “is vague about how the
pictures are used, and doesn’t mention any use of text in the associated
embodiment. There is no indication that such images teach step-by-step
instructions.” Appeal Br. 12.
This argument is unconvincing for several reasons. First, claim 1
does not recite any limitation that the “graphics-based instructional material”
includes “text.” Unclaimed limitations cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Second, the Examiner submits that the particular information that is
displayed represents non-functional descriptive material. Final Act. 6; Ans.
21. “[A] limitation is printed matter only if it claims the content of
information.” See In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015).
Printed matter itself is non-statutory subject matter, and accordingly, it must
have a functional relationship to a physical substrate holding the printed
matter in order to be given patentable weight. See, e.g., In re Miller, 418
F.2d 1392, 1396 (CCPA 1969). Moreover, even if a functional relationship
exists, the descriptive material must be functionally different from the prior
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art. That is, the functional relationship must be “new and nonobvious.” See
King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010).
Here, the Examiner determines that the content of the information
communicated to the user interface does not limit Williams’ system. Ans.
21.
Third, Williams teaches that the series of images displayed on display
screen 32 direct the operator and lead the operator through a fault solution
procedure. See Williams, col. 3, l. 65–col. 4, l. 3. The pictorial views and
images provide information to allow the operator to locate and then service
the part. The fault solution procedure would require the operator to follow
steps or instructions as provided in the series of images. Williams discloses
that the instructions “are advantageous in facilitating ease in performing
maintenance by an operator.” Williams col. 5, l. 67–col. 6, l. 1 (emphasis
added). Accordingly, Williams teaches that the operator receives images or
pictorial views of the machine component (part), the part’s location, and
instruction as how to service the part following a fault solution procedure to
address the fault. We are unpersuaded that the recited graphics-based-
instructional materials communicated to the user interface for the user is
functionally different from the information provided to display device and
user in Williams.
Appellant also contends, “since Williams only identifies a ‘potential
problem area’ or ‘possible failure points’, Williams never truly identifies
whether any particular potential problem area or possible failure point needs
to be changed to a different condition (i.e., a ‘desired condition’).” Appeal
Br. 12.
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We disagree. Williams discloses that “[t]he computer is further
operative to detect a fault condition for a component of the machine.”
Williams col. 1, ll. 51–53. Accordingly, the computer detects an actual
fault, and then, the operator is informed of the part location and fault
condition “to facilitate a corrective measure.” Id. at col. 1, ll. 55–59. By
performing the corrective measure to address the fault associated with the
part, the device’s condition would be changed from a “detected condition”
(i.e., a condition including the fault) to a “desired condition” (i.e., a
condition that does not include the fault).
As Appellant’s contentions do not apprise us of error in the
Examiner’s findings, we sustain the rejection of claim 1, and claims 6, 29,
and 30 depending therefrom and not separately argued, as anticipated by
Williams.
Claim 31
Claim 31 depends ultimately from claim 1 and recites that “the
electromechanical device does not have a computer processor.” Appeal
Br. 24 (Claims App.) (emphasis added). Appellant contends that “Williams
specifically teaches that it[s] preventative maintenance device 10 is to be
used with a machine controlled by a PLC, which ‘includes a processor.’”
Appeal Br. 10 (citing Williams col. 2, ll. 54–61). According to Appellant,
Williams teaches the opposite of the claim 31 requirement. Id.
Appellant’s contention is unpersuasive. Williams discloses that “[t]he
preventative maintenance device 10 provides preventative maintenance and
diagnostic information for a machine, such as manufacturing equipment 12,
controlled by a programmable logic controller 14. The programmable logic
controller 14 includes a processor 16 and an input/output memory 20.”
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Williams col. 2, ll. 54–59. The Examiner’s position is that Williams’
manufacturing equipment 12 corresponds to the recited electromechanical
device. See Final Act. 4; Ans. 22. We agree with the Examiner that
Williams’ PLC including PLC memory 20 and processor 16 is not disclosed
as being part of manufacturing equipment 12. Rather, Figure 1 of Williams
shows that manufacturing equipment 12 is connected to the PLC via
input/output cards 22. Williams discloses that “[t]he input/output memory
20 contains a memory location for each of a plurality of inputs received from
the manufacturing equipment 12, and a corresponding memory location for
each of a plurality of outputs to the manufacturing equipment 12.”
Williams, col. 2, ll. 62–55. Accordingly, input/output memory 20 is a
separate component from manufacturing equipment 12. It thus follows that
processor 16, which is also part of the PLC, is also separate from
manufacturing equipment 12.
As Appellant does not apprise us of error in the Examiner’s findings,
we sustain the rejection of claim 31 as anticipated by Williams.
Claims 16–18
Appellant contends Williams does not disclose “determin[ing]
whether a response action requiring physical intervention with a mechanical
component of the device by a user is warranted in response to the device
condition,” and, “if a response action is warranted, accessing a database to
provide instructional media concerning the steps a user must take to
physically intervene with the mechanical component of the device so as to
address the device condition.” Appeal Br. 14.
The Examiner responds that Williams always determines/assumes that
a physical intervention by a user of some kind is needed to resolve a fault
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state, and provides identified instructions to the user accordingly. Ans. 20
(citing Williams, col. 3, l. 45–4, l. 6, col. 5, ll. 25–60). The Examiner
submits that “[t]his determination/assumption is illustrated through the kinds
of instructions and guidance provided by the device in response to a fault
state, all of which require some form of physical intervention with the device
in order to resolve the fault state.” Id.
Appellant acknowledges that Williams discloses supplying images of
manufacturing equipment 12, but contends that “Williams cannot be taken to
teach an operator how ‘to physically intervene’ with any components.”
Appeal Br. 14. We disagree. As discussed above, Williams teaches that the
operator can receive pictorial views and images of the machine component
(part), the part’s location, and instructions for servicing the part following a
fault solution procedure to address the fault. Williams discloses that the
preventive maintenance device can monitor wear information for parts in the
manufacturing equipment, and automatically provide warnings based on the
wear. See Williams, col. 4, ll. 38–45. It is not apparent how such faults
related to part wear could be corrected without some physical intervention,
such as to replace the part, during the fault solution procedure.
Appellant further contends that Williams is vague about how the
pictures are used, does not mention any use of text in the associated
embodiment, and there is no indication that such images provide multi-step
instructions. Appeal Br. 14. These contentions are unpersuasive for the
same reasons discussed above for the rejection of claim 1.
As Appellant’s contentions do not apprise us of Examiner error, we
sustain the rejection of claim 16, and claims 17 and 18 depending therefrom
and not separately argued, as anticipated by Williams.
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Obviousness over Williams and Edwards (Claims 3–5 and 23–26)
Appellant does not present substantive argument to address the
rejection of claims 3–5 and 23–26, which depend ultimately from claim 1 or
16. Hence, we sustain the rejection of these dependent claims for the same
reasons as for claims 1 and 16.

Obviousness over Williams and Mitchell (Claims 7, 21, and 22)
Claims 7 and 21 depend ultimately from claims 1 and 16,
respectively, and both recite the limitation “the instructional material
comprises full motion video.” Appeal Br. 21, 23 (Claims App.). Claim 22
depends from claim 21. The Examiner relies on Mitchell as teaching this
limitation. Final Act. 12. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to modify Williams to have the
instructional content include full motion video clips, as taught by Mitchell,
to “increas[e] the engagement and amount of information communicated via
the instructions for the benefit of aiding the user in understanding the tasks
that need to be performed.” Id.
Appellant contends that, in Mitchell, the user is a technician and the
portable computer is separate from the malfunctioning device. Appeal
Br. 17. According to Appellant, modifying Williams as proposed by the
Examiner would destroy the stated purpose of Williams, as Mitchell’s
system is controlled by a technician, “which is the opposite of the illiterate
operator envisioned by Williams[, and] Mitchell’s system is . . . not tied to
any particular machine.” Id. at 18.
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Appellant’s contentions fail to address the Examiner’s proposed
combination of the teachings of Williams and Mitchell. As these
contentions do not apprise us of error in the Examiner’s findings or
reasoning, we sustain the rejection of claims 7, 21, and 22 as unpatentable
over Williams and Mitchell.

Obviousness over Williams and Berg (Claims 10, 12, 19, and 28)
As for claim 10, the Examiner concedes Williams does not disclose
that the computer is a remote device that monitors a plurality of
electromechanical devices. Final Act. 15. The Examiner relies on Berg as
teaching this limitation. Id. The Examiner concludes that it would have
been obvious to modify Williams to have computer 33 be a remote
computer, which services multiple equipment units, as taught by Berg, “for
the purpose of increasing the extensibility of the system to service multiple
equipment devices and to reduce the amount of storage required on the local
device for the benefit of increasing the accessibility of the system to
computers of lesser performance capabilities.” Id. at 16.
Appellant contends that Williams does not: automatically deliver
instructional media; show a user how to physically intervene with any
particular mechanical component of the machine, or clearly indicate that any
instructional media provide step-by-step instructions how to physically
intervene; and determine whether any potential problem area or possible
failure point is, in fact, an error condition that would require a “resolution
procedure involving human physical intervention with a mechanical
component,” as recited in claim 10. Id. at 16.
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Appellant’s contentions are unpersuasive for the same reasons
discussed above for claim 1. As Appellant does not apprise us of error in the
Examiner’s findings or reasoning for claim 10, and Appellant does not
provide separate argument for claims 12 and 28 depending from claim 10, or
claim 19 depending from claim 16, we sustain the rejection of claims 10, 12,
19, and 28 as unpatentable over Williams and Berg.

Obviousness over Williams, Berg, and Sisley (Claims 13–15 and 27)
Obviousness over Williams and Thiel (Claim 20)
Appellant does not present separate argument for the rejections of
claims 13–15, 20, and 27, which depend ultimately from claim 10 or 16.
Hence, we sustain the rejection of claims 13–15 and 27 as unpatentable over
Williams, Berg, and Sisley, and the rejection of claim 20 as unpatentable
over Williams and Thiel for the same reasons as for claims 10 and 16.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 16–18,
29–31
102(b) Williams 1, 6, 16–
18, 29–
31

3–5, 23–26 103(a) Williams, Edwards 3–5, 23–
26

7, 21, 22 103(a) Williams, Mitchell 7, 21, 22
10, 12, 19,
28
103(a) Williams, Berg 10, 12,
19, 28

13–15, 27 103(a) Williams, Berg,
Sisley
13–15,
27

20 Williams, Thiel 20
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Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1, 3–7,
10, 12–
31

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED