Ex Parte Aardema

Patent Trial and Appeal Board

Jan 24, 2017

13308458 (P.T.A.B. Jan. 24, 2017)

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.
13/308,458 11/30/2011 James Alvin AARDEMA 08350.0341-00000 5942
58982 7590 01/26/2017
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York Avenue, NW
WASHINGTON, DC 20001-4413
EXAMINER
RISIC, ABIGAIL ANNE
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
01/26/2017 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):
regional-desk @ finnegan. com
us_docket_clerk@cat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES ALVIN AARDEMA
Appeal 2014-007715
Application 13/308,458
Technology Center 3600
Before ANNETTE R. REIMERS, JEFFREY A. STEPHENS, and
GORDON D. KINDER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James Alvin Aardema (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject under 35 U.S.C. § 103(a) claims 1—9
and 16—20 as unpatentable over Congdon (US 7,731,450 B2; iss. June 8,
2010), Sommer,1 and Hodges (US 2008/0252483 Al; pub. Oct. 16, 2008).
Claims 10—15 have been withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Dustin Sommer and Nick Deming, Real Time Quality Control, Design
Construction, and Materials Pavement Enterprise, 1—24, Michigan
Technological University (undergraduate paper submitted, Spring 2007).
Appeal 2014-007715
Application 13/308,458
CLAIMED SUBJECT MATTER
The claimed subject matter relates “to a paving system utilizing
embedded measuring devices.” Spec. para. 1, Figs. 1, 4. Claims 1 and 16
are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method of controlling a paving process,
comprising:
mixing a sensor within a paving material, wherein
the sensor comprise a sensing element, an integrated
circuit connected to the sensing element, and an antenna;
dispensing the paving material at a desired location;
monitoring a wireless signal from the antenna of the sensor
using a reader during the paving process; and
controlling the paving process based on the wireless
signal received by the reader,
ANALYSIS
Claims 1—9
Appellant does not present arguments for dependent claims 2—9
separate from those presented for independent claim 1. See Appeal Br. 16.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 2—9 stand or fall with claim 1.
Appellant contends that the combined teachings of Congdon,
Sommer, and Hodges fail to disclose the steps of (1) “monitoring a wireless
signal from the antenna of the sensor using a reader during the paving
process”; and (2) “controlling the paving process based on the wireless
signal received by the reader,” as recited in claim 1. See Appeal Br. 9-15;
see also Reply Br. 2—9. In particular, Appellant contends that “Congdon
does not disclose or suggest ‘controlling [a] paving process based on [a]
wireless signal [from [a] sensor within a paving material] ’ []. Rather, the
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Application 13/308,458
electronic controller 30 merely receives rolling resistance information from
the sensor 26, which is located on the compactor machine 10.” Appeal Br.
11; see also id. at 13; Reply Br. 3, 6.
Appellant further contends that “nothing in Sommer suggests that the
temperature and pressure data from the RAT of Sommer could or would be
used to control a paving process. Instead, . . . Sommer merely teaches the
temperature and pressure data being for a completely different purpose — to
analyze roadbed conditions.” Appeal Br. 11; see also Reply Br. 3.
Appellant also contends that “Hodges fails to remedy the deficiencies
of Congdon and Sommer.” Reply Br. 4; see also Appeal Br. 11. In
particular, Appellant contends that (1) “Hodges merely discloses that the
reader reads pre-loaded information from a transponder embedded in an
already paved roadway surface, the reader of Hodges does not ‘monitor[] a
wireless signal from an antenna of [a] sensor [within a paving material] []
during [a] paving process'”; and (2) “information pre-loaded on transponder
before a paving process and which can only be accessed after completion of
the paving process [as disclosed in Hodges] clearly cannot be used to
‘control[] [a] paving process.’” Reply Br. 9; see also id. 4—5; Appeal Br. 11.
At the outset, we agree with the Examiner that Appellant’s arguments
are attacks on the references individually rather than a challenge to the
Examiner’s combination of the teachings of Congdon, Sommer, and Hodges.
See Ans. 3; see also Reply Br. 2—3; In re Merck & Co., 800 F.2d 1091 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413 (CCPA 1981) (one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references).
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In this case, the Examiner relies on Congdon for disclosing the steps
of “monitoring a signal from the sensor during the paving process; and
controlling (via 30) the paving process based on the signal (Column 13,
Lines 20-30).” Final Act. 2; see also Appeal Br. 13—14; Reply Br. 6—7.
Congdon discloses:
Sensed values from sensor 26, [i.e., signals from sensor 26] as
well as position signals received via receiver 24, may be utilized
[i.e., monitored] by compactor 10 during or after traversing path
P2, to determine compaction responses associated with Region
A.
Congdon, 13:21—24 (emphasis added); see also Final Act. 2; Appeal Br. 13—
14; Reply Br. 6—7. Congdon further discloses: “Electronic controller 30 may
be configured to record sensed values [i.e., signals from sensor 26]
associated with rolling resistance during each of a plurality of compactor
passes over a region of a work area, such that a work material compaction
response curve may be determined based on the sensed values.'1'’ Congdon,
4:56—60 (emphasis added); see also id. at 3:22—27. Based on Congdon’s
disclosure, we agree with the Examiner’s findings.2
The Examiner relies on Sommer for disclosure of (1) wirelessly
monitoring temperature and pressure data from embedded sensors within
paving material; and (2) the sensor including a sensing element, an
integrated circuit connected to the sensing element, and an antenna. See
Final Act. 2; see also Ans. 3^4; Sommer:20, Overview (“[The] transmitter
2 Regarding Appellant’s contention that sensor 26 of Congdon is “located on
the compactor machine 10” (see Appeal Br. 11; see also Reply Br. 3), we note
that Congdon discloses that “sensor 26 might comprise sensor(s) which are
separate from compactor 10.” Congdon, 4:43 44 (emphasis added).
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Application 13/308,458
could report temperature and pressure in an asphalt mix or concrete mix
wirelessly to receivers giving data about what is happening within the mixes
[i.e., monitoring the mixes]),” id. at Fig. 2. The Examiner reasons that
“Congdon teaches a compactor having a sensor for sensing values indicative
of compaction response. Sommer[] teaches an embedded sensor for
monitoring compaction in asphalt.” Final Act. 7. The Examiner concludes
that “Sommer[] provides an alternate way of monitoring compaction
response by embedding sensors in pavement.” Id. The Examiner further
concludes that it would have been obvious “to embed sensors in the paving
material as taught by Sommer in the system of Congdon to provide more
accurate information to the user about the state of the paving material.” Id.
at 2.
The Examiner finds that the combined teachings of Congdon and
Sommer fail to disclose a reader to read the wirelessly transmitted data from
embedded sensors. Id. at 2—3; see also Ans. 3—5. The Examiner relies on
Hodges merely for disclosing “a reader for reading embedded data in
asphalt.” Ans. 4; see also id. at 3; Final Act. 3.3 The Examiner concludes
that it would have been obvious “to use a reader as taught by Hodges to
3 Regarding Appellant’s contention that Hodges’s reader “merely reads pre-
loaded information,” (see Reply Br. 4—5, 9), we note that Hodges discloses:
(1) “As another example, a police vehicle could encode objects with current
highway conditions or traffic problems (e.g., bridge out ahead or accident
ahead)”; and (2) “Although in some embodiments passive RFID tags are used,
in other embodiments active transponders are used . . . the transponders may
communicate with each other . . . Moreover, an embedded roadway network
may be constructed such that information is relayed from one transponder to
the next along the length of the roadway and extracted by a vehicle or other
mechanism.” See Hodges, paras. 32, 34 respectively (emphasis added).
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monitor the signal of the sensors of Congdon as modified by Sommer to
allow the paving machine an easy way to receive the signal and monitor the
condition of the asphalt.” Final Act. 3.
The Examiner’s findings and conclusions are based on rational
underpinnings. Appellant does not provide any persuasive evidence or
argument apprising us of error in the Examiner’s findings or conclusions.
Appellant contends that Sommer and Congdon “are directed to
different functions and results.” Appeal Br. 13; see also id. at 13; Reply Br.
6—7. According to Appellant, “[accessing roadbed conditions based on
temperature and pressure data, as disclosed by Sommer, is a very different
result achieved when compared to guiding a compactor autonomously along
an appropriate travel path, as disclosed by Congdon.'” Appeal Br. 14; see
also id. at 13; Reply Br. 6—7. Appellant contends that “Sommer does not
address guiding a compactor along an appropriate travel path. Nor does
Sommer recognize a solution to this problem. Rather, Sommer confronts a
different problem and solution — assessing roadbed conditions based on
temperature and pressure data.” Reply Br. 7; see also id. at 6; Appeal Br.
13—14. Appellant concludes that “the quality control objectives of Sommer
do not address the path planning objective of Congdon.” Reply Br. 7; see
also Appeal Br. 14.
Appellant further contends that “because of the divergent functions
and results” in combining Sommer and Congdon, (1) “the modification
proposed by the Examiner would not be a simple ‘drop in’ modification. In
fact, the Examiner’s proposed substitution ignores the additional
modifications that would be necessary in an attempt to employ the RAT of
Sommer in the compactor machine path planning system of Congdon”; and
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(2) “one having ordinary skill in the art of Congdon would not have even
been motivated to look to the temperature and pressure sensors of Sommer,
‘to provide more accurate info to the user about the state of the paving
material,’ as [] stated by the Examiner.” Appeal Br. 14—15; see also Reply
Br. 7-8.
It is well established that the reason to modify the reference may often
prompt a person of ordinary skill in the art to do what the inventor has done,
but for a different purpose or to solve a different problem. It is not
necessary that the prior art suggests the combination to achieve the same
advantage or result discovered by an applicant. In re Kahn, 441 F.3d 977,
987—88 (Fed. Cir. 2006). In this case, the Examiner points out that
“Congdon and Sommer are both related to monitoring the properties of a
paving material.” Ans. 4; see also Final Act. 7. The Examiner finds that
“Congdon teaches the sensor can be any type of sensor that measures,
directly or indirectly, compaction response (Column 4, Fines 35-45).
Temperature and pressure data of paving material [as disclosed in Sommer]
would be indicative of compaction response.” Ans. 4; see also Final Act. 7.
The Examiner concludes that “Sommer[] provides an alternate way of
monitoring compaction response by embedding sensors in pavement” and
that it would have been obvious “to embed sensors in the paving material as
taught by Sommer in the system of Congdon to provide more accurate
information to the user about the state of the paving material.” Final Act. 2,
7. The Examiner’s findings and conclusions are based on rational
underpinnings. Appellant does not provide any persuasive evidence or
argument apprising us of error in the Examiner’s findings or conclusions.
Moreover, Appellant does not provide any evidence or argument sufficient
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Application 13/308,458
to show that the proposed modification would have been beyond the level of
ordinary skill in the art. Neither does Appellant provide any persuasive
evidence or argument sufficient to show that the proposed modification
would have been more than a predictable use of the prior art elements
according to their established functions. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417.
Given that both Congdon and Sommer are related to monitoring the
properties of a paving material and that Congdon’s sensor 26 may be “any
sensor type, or sensor group, which is configured to sense some parameter
value that is indicative of, either directly or indirectly, a compaction
response of work material in a work area,” we fail to see why “one having
ordinary skill in the art of Congdon would not [have been] motivated to look
to the temperature and pressure sensors of Sommer,” as suggested by
Appellant. See Appeal Br. 14—15; see also Reply Br. 7—8; Ans. 4; Final Act.
7; Congdon, 4:35—38 (emphasis added). Moreover, the Examiner correctly
notes that (1) Hodges, not Sommer, is cited for disclosing “a reader for
reading embedded data in asphalt”; (2) Sommer discloses “wirelessly
transmitting data from the sensor”; and (3) “the rejection is based on the
combination of references of Congdon, Sommer and Hodges.” Ans. 4; see
also id. at 3; Final Act. 2—3.
Additionally, to the extent that Appellant is arguing the references
must be capable of bodily incorporation in order to combine their teachings,
the test for obviousness is not whether the features of a secondary reference
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Application 13/308,458
may be bodily incorporated into the structure of a primary reference. In re
Keller, 642 F.2d at 425. “Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.” Id.
(citations omitted). In this case, the Examiner provides reasons with rational
underpinnings for combining the references as proposed in the rejection.
See Final Act. 2—3; see also Ans. 3—5. Appellant does not provide any
persuasive evidence or argument to the contrary.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of independent claim 1 as unpatentable over Congdon, Sommer,
and Hodges. We further sustain the rejection of dependent claims 2—9,
which fall with claim 1.
Claims 16—20
Appellant does not present arguments for dependent claims 17—20
separate from those presented for independent claim 16. See Appeal Br. 15—
16. We select claim 16 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 17—20 stand or fall with claim 16.
Appellant contends that “the combination of Congdon, Sommer, and
Hodges fails to disclose or suggest or render obvious [] features of
independent claim 16 for at least the same reasons discussed [] with respect
to independent claim 1.” Appeal Br. 16; see also Reply Br. 9. As we find
no deficiencies in the Examiner’s rejection of independent claim 1 as
unpatentable over Congdon, Sommer, and Hodges, we likewise sustain the
Examiner’s rejection of independent claim 16 as unpatentable over
Congdon, Sommer, and Hodges. We further sustain the rejection of
dependent claims 17—20, which fall with claim 16.
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DECISION
We AFFIRM the Examiner’s decision to reject claims 1—9 and 16—20
as unpatentable over Congdon, Sommer, and Hodges.
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
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